CQMS Pty Ltd v ESCO Group LLC
[2024] APO 29
•28 June 2024
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 (EIA) was filed on 03 May 2021. Evidence in Reply (EIR) was filed on 23 June 2021. An amended SGP was filed on 6 August 2021, which was allowed on 13 October 2021.
I wrote to both parties on 10 November 2023 requesting submissions regarding my concerns regarding a potential lack of utility. The Applicant provided Submissions in Chief (SIC) on 01 December 2023, the Opponent provided Submissions in Answer (SIA) on 22 December 2023, and the Applicant provided Submissions in Reply on (SIR) on 12 January 2024. While the Applicant, in a cover letter attached to their SIR, sought to be heard orally in relation to these issues, I determined that an oral hearing was not necessary given the written submissions.
Family members – other oppositions
This application is one of several divisional applications that have been filed from the parent application. The family is as follows:
The family history is fraught. The parent application was subject to an opposition filed by the opponent. Following a number of decisions[1], the parent application was granted in amended form. Furthermore, each divisional application that has been accepted (and where the advertisement period has elapsed) has been opposed by the opponent to one degree or another. This decision is simply one of a number that have been made, and will be made, over the coming months in relation to these oppositions.
[1] CQMS Pty Ltd v ESCO Group LLC [2020] APO 5, CQMS Pty Ltd v ESCO Group LLC [2020] APO 53, CQMS Pty Ltd v ESCO Group LLC [2022] APO 3
Evidence
EIS comprises:
·A declaration of Dr Nicholas Hillier (Hillier 1) dated 01 February 2021, accompanied by exhibits NH-1 to NH-3.
EIA comprises:
·A declaration of Hezekiah Holland (Holland) dated 01 May 2021.
EIR comprises:
·A declaration of Dr Nicholas Hillier (Hillier 2) dated 23 June 2021, accompanied by exhibits NH-4 to NH-6.
On 19 July 2021, the Applicant raised concerns that some of the EIR was not properly in reply and sought to have this evidence excluded from the opposition. A delegate of the Commissioner indicated that, in their opinion, a number of the EIR paragraphs were not properly in reply while several others were. A hearing was requested and a decision[2] issued on 11 May 2023. The result is that paragraphs [10], [38], [40]-[51], and [53] are not considered as EIR. The hearing delegate found that paragraph [39] in its entirety was properly in reply, and this supersedes a direction made by the letter delegate. I will therefore consider the entirety of paragraph [39] from the evidence in reply.
[2] CQMS Pty Ltd v ESCO Group LLC [2023] APO 29
During correspondence with the Commissioner prior to the EIR decision, the Opponent indicated that they intended to request that any excluded paragraphs be considered under Reg 5.23. As discussed later in the decision, the submitted material did not meet the thresholds outlined in Reflex Instruments Asia Pacific Pty Ltd v Minnovare Limited [2017] APO 8; 128 IPR 173 at [52] (“Reflex”). Hence I will not consult them.
Grounds of opposition
The SGP sets out that 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.
The Opponent narrowed their case in the OS and at the hearing to:
a)Lack of an inventive step; and
b)Non-compliance with the requirements for clear enough and complete enough disclosure (S 40(2)(a)), and lack of clarity and support for the claims (S 40(3)).
Applicable law
The Application was filed after 15 April 2013 and is thereby 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.
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)
The invention as described
Background
The specification begins by noting that wear parts (e.g., teeth, shrouds, and lips) commonly provided along the edges of excavating equipment encounter heavy loading and highly abrasive conditions that can cause the wear parts to disengage from the excavating machine and/or be subject to wear. Lost wear parts may cause damage to downstream excavating equipment, and worn wear parts could lead to a decrease in production and excessive wear on other components on the excavating equipment. The specification describes that operators of the excavating machines are not always aware of this occurring and, as such, there have been systems developed to monitor when a wear member has been worn or damaged and needs replacement.
The background explains that some prior art systems have mounted cameras on shovel booms, but the cameras only have a clear view of the wear members during a portion of the digging cycle. Consequently, it is possible the discovery that a wear member has been lost or needs replacement will not be registered immediately and the system may have to wait until the point in the digging cycle that the members are visible to confirm that the wear member is truly missing or worn.
Another prior art system involved the use of a spring-loaded switch which is activated when a wear member is lost. A further system was the use of a smoke canister that provided a visual signal when a wear member fell off. However, neither of these systems could determine whether a wear member had reached the end of its life and needed to be replaced.
Solution
The solution proposed in the specification is the use of a sensor for monitoring the status, health, and/or performance of wear parts used on various kinds of earth working equipment including excavating equipment, such as dozers, loaders, dragline machines, etc, and ground conveying equipment such as chutes and mining truck beds or bodies. The sensor transmits a signal which is analysed by programmable logic to determine the presence, absence and/or wear level of a wear part. If the wear part is determined by the programmable logic to be worn and/or missing, the programmable logic triggers an alert that notifies the operator who will, depending on the circumstances, take the necessary actions to ensure that the missing wear part is replaced, or that the missing wear part does not damage downstream excavating equipment.
The description is, from a technical point of view, pitched at a high level. Elements are referred to in broad, general terms, with some specific examples of elements occasionally given. Electronic sensors are identified as 2D cameras, 3D cameras, infrared cameras, laser range finders, an ultrasonic sensor, or another distance measuring sensor, an accelerometer, pressure sensor, or similar impact sensor, a strain gauge or load cell. The sensors are primarily described as being mounted to a portion of a bucket of some form of excavating equipment, but there is mention of the sensor (particularly the strain gauge or load cell) being mounted in wear members. While computer processing units (CPUs), controllers, personal computers (PCs) and programmable logic controllers (PLCs) are given as examples of the programmable logic, specifics of the programming of these elements are not provided. Only a high-level overview of the software / decision tree is provided.
Relevant Embodiments
The sensor used in the invention, its mounting and its protection are described with the aid of Figure 8 (reproduced below) and paragraphs [54]-[56]. The specification states, in part, that:[6]
“The electronic sensor(s) 27 may be housed in one or more enclosures 31 in one or more locations on the wear part that engages and moves the ground to be excavated to protect the electronic sensor(s) 27 from the harsh mining environment and to keep the aperture 33 of the housing of the electronic sensor 27 free of fines, dirt, or other material that may negatively impact the electronic sensor 27 (Figures 8 and 11).”
The specification states that the wear part could be a bucket, a blade, a truck body, or the like. The specification also notes that sensors may also be located on or in wear parts such as a point, an intermediate adapter, an adapter, a shroud, a nose, a lip, a wear runner, a truck liner, or the like. It further states that sensor 27 is mounted via vibration damping mounts 53 inside a mounting unit 55 located within enclosure 31. The embodiment provides an aperture 33 in the mounting unit 55. In Figure 8, the enclosure 31 is shown with a cut-out 37 covered with a transparent wall 41. In this particular embodiment the sensor 27 is a camera. The arrangement of sensor, mounts, unit and enclosure when the sensor is of a different type is not discussed in the application in any great depth. In an alternate embodiment (not shown) a cutout may be made in the bucket and covered by transparent wall 41 “so that the electronic sensor is completely sealed within the enclosure”[7].
[6] Specification at [54]
[7] Specification at [55]
Figure 9 shows an embodiment where the monitoring system 25 is mounted on the bucket. The bucket contains Ground Engaging Tools (“GET”) in the form of replaceable teeth 27.
The electronic monitoring system 25 is installed on the bridge 29 or top of the bucket, preferably having a clear line of sight to the lip of the bucket. It is also envisaged that there may be a nozzle spraying water or air to clean the transparent wall 41 in the aperture 37, or that a wiping tool could be used “so that as dirt and fines accumulate the air, water or cleaning agent cleans the transparent wall 41 and keeps the transparent wall 41 see through”.[8] In another embodiment, the transparent wall 41 could be replaced by a spool of transparent film that could be wound to expose a clean section when the film covering the aperture 37 becomes too dirty and opaque. Further alternate embodiments include removable layers of transparent material, and a moveable cover which opens to allow measurements to occur and then closes when not taking a measurement.
[8] Specification at [55]
Figures 7A and 7B present a flow chart which outlines the signal processing at a high level. The Figures show, and the specification describes[9], that three different wear member checks are performed, and the result of each of the checks determines whether an alarm or error is produced. The processing initially determines the length of the wear part, determines whether particular features of the wear part and base are present, and determines the total number of edges extending from the base. The length determination is explained in terms of image processing steps, but a brief mention is made that length of the wear part can be determined using an ultra-sonic sensor, a laser interferometer, or another distance measuring sensor. No further detail is given on how to determine length without image processing. Each of the determinations are compared against reference criteria, which the specification notes may be stored in a database. Should one of these comparisons return a negative result then an error is generated and reported back to the user. The specification states that not all checks need to be performed, and that they do not need to be performed in parallel. It further states that more checks may be made, but provides no information on what those additional checks may be.
[9] Specification at [45]-[46]
Once the received image signals are processed the result can be displayed on a human/machine interface (HMI). Figure 17 depicts an example HMI.
The display 73 has a picture that displays each wear member 77 and the status of each wear member (i.e., absent/present, acceptable wear, needing maintenance). The HMI 71 may display a live image 79 of the lip of the bucket so that an operator can visually check that an alert is valid. In the displayed example, it has been determined that a wear member is absent because a specific marking (i.e. a triangle) on the wear member’s base has become visible in live image 79 when the wear member is detached. The point wear (top right of display 73) is determined by assessing how many grooves remain on the wear members. The ridges extend from the outer end of the wear member, and the number decreases as the wear member is eroded.
Claims
The specification ends with 15 claims, these comprising 2 independent claims and 13 dependent claims. The full set of claims are attached in Annex 1. The independent claims are as follows:
1. A system for monitoring earth working equipment, the system comprising:
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.2. A system for monitoring earth working equipment, the system comprising:
a bucket with a digging edge secured to the earth working equipment;
a ground-engaging wear part secured to the digging edge;
at least one electronic sensor secured to the bucket with a clear line of sight to the wear part for detecting whether the wear part has detached from the bucket, and wirelessly transmitting such 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.The Person Skilled in the Art
It is well established that many of the issues in an opposition are answered by reference to the person skilled in the art (PSA):
“He is the person to whom the patent is addressed and who must construe it. He is the person whose knowledge will determine whether a patent is novel. He is the person who will judge whether a patent is obvious.”[10]
[10] Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980 at [70].
The hypothetical skilled person works in the field with which the invention is connected and is a non-inventive person or team likely to have a practical interest in the subject matter of the invention.[11]
[11] Ibid at [70]-[72].
The Opponent submitted that the PSA would be one of a mining engineer, mechanical engineer, or an electrical engineer. They also submitted that the PSA would have knowledge of earth moving equipment, be able to determine how to measure wear of wear parts, and have experience in how to implement the monitoring systems to determine the wear.[12] The Applicant submitted that the PSA “will be an engineer with experience in wear parts used for earth working equipment and methods by which the health and performance of such wear parts can be assessed or monitored over time.”[13] The skills identified by both parties effectively overlap, as do the general notion of an engineer who would design such a system.
[12] SGP 2.2.1 – 2.2.7
[13] AS at 6.4
I agree that the skills identified by both parties are applicable – though I am not convinced that the specific engineers noted by the Opponent cover the monitoring system or image processing aspects of the invention. For example, while a mechanical or mining engineer would be aware of image processing techniques, they would likely need to draw on the expertise of someone more skilled in such an area to implement particular embodiments of the invention. Instead, I consider the PSA to be an engineer or technician with the skills identified above, and not necessarily restrict it to a particular form of engineer. Those skills to include experience in monitoring systems and in image processing.
The Experts
Dr Hillier is presented as the expert for the Opponent. He 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[14] that he has given evidence in the opposition to the parent application and in oppositions associated with other divisional applications. Dr Hillier comments[15] 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.
[14] Hillier 1 at [15]
[15] Hillier 1 at [3]–[6]
Dr Hillier also states[16] 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. He then had 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, as well as 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.
[16] Hillier 1 at [7]–[11]
Mr Holland is presented as the expert for the Applicant. He states[17] 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 establishment of Holland Consulting in 1999, 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[18]. He notes that, while working with the Applicant, he was involved in projects comprising the redevelopment of buckets for different types of excavating equipment. He states:
“part 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.”[19]
[17] Holland at [2.4]
[18] Holland at [2.2]
[19] Holland at [3.2]
Mr Holland also states[20] that 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 until May 2013; 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 established a start-up company in June 2016 – iA3, 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[21]. He established EncycloMEdia in 2020, which is involved in projects comprising information from existing data sources, analysing that data and using it in new ways; and AlaskaV3 also in June 2020, which is an Alaskan social impact start-up company.
[20] Holland at [2.5]–[2.12]
[21] Holland at [3.8]-[3.9]
The Opponent submitted that (emphasis, footnotes removed):[22]
“… it is clear that Mr Holland has not worked with wear parts or excavating equipment since he left ESCO in 1999. It follows that the evidence of Mr Holland is given from the perspective of a person who was, by the Priority Date, far removed from the field of the invention. Mr Holland’s lack of experience in the design and engineering of excavation equipment, wear parts and related monitoring systems, in the 13 years immediately before the Priority Date, severely limits the weight that can be placed on his evidence.”
[22] OS at [15] – in reference to Holland [2.4]-[2.13]
In response, the Applicant submits in relation to Mr Holland:[23]
“It is clear that Mr Holland has extensive experience in GETs [ground engaging tools]. There is no suggestion by the Opponent that wear parts or excavating materials, or the conditions those parts are subject to during wear, have changed over the time that Mr Holland has not directly worked in the mining industry.”
and
“Mr Holland also has extensive experience in the use of different types of sensors in different environments. His combined knowledge of both the environmental conditions GETs are subject to, and of the considerations in the choice and location of sensors, are highly relevant to this opposition.”
[23] AS at 6.10-6.11
The Applicant submitted that Dr Hillier’s evidence, due to his being employed by a related entity to the Applicant, “cannot be accepted as independent and should be viewed with caution.”[24]
[24] AS at 6.6
I have considered the qualifications and experiences of the experts. I am of the view that both experts can provide evidence as to what the PSA knew and would have done. It is also worth noting that both experts gave evidence in the parent application. The evidence which they both give may therefore contain some ex post facto analysis. Where there is conflicting evidence, or evidence which strays into ex post facto territory, I will provide reasoning for preferring one expert over the other.
Construction
The principles underpinning construction are well-established. The following summary was provided by the Full Court of the Federal Court in Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag [2008] FCAFC 121 (Austal Ships), citing with approval from an earlier decision[25]: (underlining added)
[25] Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag [2008] FCAFC 121 at [13]-[14]
“In Flexible Steel Lacing Company v Beltreco Ltd [2000] FCA 890; (2000) 49 IPR 331, Hely J considered at length the approach to construction of a specification and, in particular, the circumstances in which uncertainty might lead to invalidity. At [71]-[78] his Honour identified the following principles:
·The monopoly must be defined in a way that is not reasonably capable of being misunderstood.
·In determining the nature and extent of the monopoly claimed, the specification must be read as a whole, but recognizing that the parts have different functions. The claims mark out the legal limits of monopoly. What is not claimed is disclaimed. The specification describes how to carry out the process and the best method known to the patentee of doing so.
·Although the claims are construed in the context of the specification as a whole, it is not legitimate to narrow or expand the boundaries of the monopoly as fixed by a claim by adding glosses drawn from other parts of the specification. If a claim is clear, it is not to be varied, qualified or made obscure by statements found elsewhere in the document.
·It is legitimate to refer to the rest of the specification to explain the background to the claims, to ascertain the meaning of technical terms and resolve ambiguities in the construction of the claims. When the language of the claims is obscure or doubtful such doubts may be resolved by reference to the specification.
·It is not necessary that the claims be construed without reference to the body of the specification in order to see whether there is any ambiguity. The document is construed as a whole. If the specification demonstrates an intention that words used elsewhere have a particular meaning, effect should be given to such a ‘dictionary’.
At [79]-[81] his Honour then continued:…
[81] Other principles of construction which may be of assistance in the resolution of the present matter include:
· A patent specification should be given a purposive construction rather than a purely literal one…
· The hypothetical addressee of the patent specification is the non-inventive person skilled in the art before the priority date. The words used in a specification are to be given the meaning which the hypothetical addressee would attach to them, both in the light of his own general knowledge and in the light of what is disclosed in the body of the specification.
· There is a fine line between, on the one hand, reading down the words of a patent claim to reflect how a person skilled in the art would understand it in a practical and commonsense way, and, on the other hand, impermissibly limiting the clear words of a claim because a reader skilled in the art would be likely to apply those wide words only in a limited range of all the situations they describe.
· It is permissible for an invention to be described in a way which involves matters of degree. Lack of precise definition in claims is not fatal to their validity, so long as they provide a workable standard suitable to the intended use. The consideration is whether, on any reasonable view, the claim has meaning. In determining this, the expressions in question must be understood in a practical, commonsense manner. Absurd constructions should be avoided and mere technicalities should not defeat the grant of protection.
· As a general rule, the terms of a specification should be accorded their ordinary English meaning.
· Evidence can be given by experts on the meaning which those skilled in the art would give to technical or scientific terms and phrases and on unusual or special meanings given by such persons to words which might otherwise bear their ordinary meaning.
· However, the construction of the specification is for the court, not for the expert witness. In so far as a view expressed by an expert depends upon a reading of the patent, it cannot carry the day unless the court reads the patent in the same way.
· Section 116 of the 1990 Act provides that the court may, in interpreting a complete specification, refer to the specification without amendment. However, it is neither useful nor legitimate to do so where the amended specification is clear.”
“System for monitoring”
Both experts generally agree on the general definition of a “system for monitoring” and both have used a plain English definition. Mr Holland presents:[26]
“A monitoring system is a set of components which includes a sensor, the collection of data from the sensor and the conveying of that data to another portion of the system, either at that time or at some future time. The benefits of an electronic monitoring system as described in the Opposed Application are that the system can capture data that cannot be monitored by an individual, or would be difficult to monitor by an individual. It also allows for continuous monitoring, and the collection, storage and retrieval of data at different points over time, which can be analysed to improve operations.”
[26] Holland at 5.3, emphasis added
Dr Hillier describes a monitoring system as:[27]
“To ‘monitor’ something means to maintain regular surveillance over that thing.
A system for monitoring (or monitoring system) could therefore be any system which is able to, for example, observe one or more parameters or aspects of the operation, etc., of another device or object or system.
In the context of machinery and equipment used in the mining industry, a monitoring system for use with such machinery or equipment would generally collect or obtain information or data from one or more sensors or other data sources, and the monitoring system would also process or analyse or interpret (or in any case do something with) that data to enable the data to then be presented in some way (even if just on a screen or display for monitoring) or used for some further purpose.”
[27] Holland 1 at NH-1 item 1.1 column 3, emphasis added
I agree with both experts that a monitoring system would be a system which measures some parameter of the system at different points in time, though it does not necessarily need to be continuous. In a general sense, it would suffice for a monitoring system to be intermittent or irregular. Within the context of the problem and solution identified in the specification (see [16] – [20] above), I agree with Dr Hillier’s view that the monitoring would need to be regular. It does not need to be continuous as indicated by Mr Holland.
I also agree that the data produced by the sensor(s) would be processed, analysed, and/or presented in some way. But I am not necessarily in agreement with Mr Holland’s comment regarding the transfer of data to “another portion within the system”. The claims only require that the information be wirelessly transmitted. In many fields there is a distinction between the terms “information” and “data”. The distinction is that data needs to be processed to extract the information. In the present case, the sensors provide the (raw) data and this would be processed to extract the information (the degree of wear, detachment of a wear part). The claimed invention does not preclude the transfer of data within the system, but it is only the processed information which is transferred wirelessly to the remote device.
Dr Hillier also noted that a monitoring system is essentially passive and, following any processing within the system, does not perform “actions” which could alter the way the machine operates – he considers that any such action would be part of a control system[28]. I am largely in agreement. However, I will note that a wide variety of “actions” may occur which do not alter the way the machine operates, and which may occur in monitoring systems. For example, the issuing of alerts, indicators, etc when a parameter exceeds a given value is a common action for a monitoring system, particularly those where no control actions are taken within the system.
[28] Hillier1 NH1 at 1.1, emphasis added
“Sensors”
As part of their submissions regarding support and sufficiency, the Opponent submitted that the term “sensors” could encompass any type of sensor known in the art. These include not only the cameras, rangefinders, and ultrasonic transducers in the dependent claims, but also inclinometers, accelerometers, pressure sensors, etcetera.
While the term, when considered by itself, encompasses all of these options, it must be construed in context. The whole feature which is referred to in Claim 1 is: “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”.
When the claim is limited to solely one sensor, via the “at least one sensor” limitation, it is apparent that the sensor of Claim 1 must be capable of both detecting wear in the wear part and detecting the detachment of a wear part. An absurd construction would result should a sensor not capable of performing both these functions be selected. On a plain reading of the claim, and in the event that there are two or more sensors, claim 1 appears to incorporate the possibility that at least one or more of the sensors must be able to both detect wear in the wear part and detachment of the wear part, or that any combination of sensors may be used provided that the individual functions are individually produced, for example, sensor 1 might detect only detachment of the wear part and sensor 2 might detect only wear of the wear part. In my view the plain language of the claim allows for either of these possibilities.
Noting dependent claims 8-13, the sensor(s) includes within its scope at least an optical camera, an infrared camera, a thermal imaging camera, an ultrasonic sensor, a laser range finder, and a laser interferometer.
In Claim 2, the sensor appears in context as: “at least one electronic sensor secured to the bucket with a clear line of sight to the wear part for detecting whether the wear part has detached from the bucket.” The limitation of “with a clear line of sight to the wear part” indicates that a line of sight sensor is utilised to detect whether the wear part has detached. Such a limitation would serve no purpose should a sensor which does not operate on a line of sight principle be used. Therefore sensors which do not operate on a line of sight principle are excluded from my construction.
Both parties agree that there is a typographical error in Claim 3, and that it should instead depend on Claim 2. Claim 3 adds that the electronic sensor also detects wear in the wear part and that the programmable logic device determines the degree of wear in the wear part. This feature is already present in Claim 1. I therefore agree with both parties and will proceed assuming a future amendment will correct this error. Claim 3 introduces that the sensor needs to be further limited so that it will detect both wear part detachment and the amount of wear on a wear part. The sensor of Claim 3 would therefore have the same scope in terms of functionality as the sensor as Claim 1, with the additional limitation of it being a line of sight sensor with a clear line of sight to the wear parts.
I also note there is nothing in any claim that indicates that a plurality of wear parts are monitored – reference is always made to monitoring a singular wear part.
“Bucket”
While both parties agree that there is an accepted and well understood meaning of “bucket” in the construction and mining industry, there is contention between the parties over whether a dozer blade can also be construed as a type of bucket.
The Opponent’s expert submitted that:
“Even if the dozer blade in this document is not an excavating bucket (although I do consider dozer blades could be considered to be an excavating bucket due to their scooping function) nevertheless the document does mention excavator buckets.”[29]
and
“… a bucket of an excavating machine is the component or tool on the excavating machine (or excavator) which scoops up the material being excavated. In other words, the "bucket" is the component or tool into which the excavated material enters and is held before the material is then dumped out of the bucket (e.g. into the back of a truck for transportation, or into a separate heap/pile, etc.).”[30]
[29] Hillier1 NH3 at integer 1.2 column 5
[30] OS at 31
In oral submissions, the Opponent expanded their argument to indicate that because a dozer uses the blade to excavate, then it follows from Dr Hillier’s evidence (see next paragraph) that the blade may be considered a bucket.
The Applicant disagrees with the Opponent’s characterisations and submits that Dr Hillier’s construction of ‘bucket’ is excessively broad:
“… a dozer blade is a largely flat single piece of metal, it has limited scooping capabilities. This is distinct from a bucket, which has front, back and side walls defining a containment portion into which material is gathered (being the function of a bucket). This is consistent with both the use of the term “bucket” in a non-technical sense (which has walls defining a containment portion), and is also consistent across different bucket designs for construction and mining buckets, including the dipper buckets and dragline buckets referred to by the Opponent. The Applicant rejects the suggestion that a person in the mining or construction industries would consider or refer to a blade as a bucket.”[31]
and
“As referred to in OS [31], Dr Hillier makes the following comment on buckets in Hillier1:
‘Buckets of excavating machines can take a range of forms and designs, for example a dipper bucket has a number of design differences to a dragline bucket. However, in all cases, a bucket of an excavating machine is the component or tool on the excavating machine (or excavator) which scoops up the material being excavated. In other words, the “bucket” is the component or tool into which the excavated material enters and is held before the material is then dumped out of the bucket (eg into the back of a truck for transportation, or into a separate heap/pile, etc.’
There is no suggestion by Dr Hillier that a bulldozer blade is able to have excavated material ‘enter’ and be ‘held’ within it before ‘dumping out’ that material. It therefore does not appear that a bulldozer blade meets even Dr Hillier’s construction of a bucket of an excavating machine.”[32]
[31] AS at 7.15
[32] AS at 7.16; Hillier1 quote from NH1 at 1.2
The Macquarie Dictionary defines a bucket to be:
“1. a vessel, usually round with flat bottom and a semicircular handle, for carrying water, sand, etc.
2. anything resembling or suggesting this.
3. one of the scoops attached to or forming the endless chain in certain types of conveyers or elevators.”[33]and defines blade as:
“9. the adjustable front-end piece of an earthmoving tractor by which the material to be moved is dug up, picked up, pushed over, etc., as required.”
[33]
I am not persuaded that a dozer blade can be a bucket, or that it would be construed as such within the general mining field. A dozer blade has limited to no ability to scoop and hold material, or to transport any held material to another location. If I were to follow the reasoning submitted by the Opponent regarding excavation or scooping, then I must also consider that a spade could be construed as a bucket. Such a construction would be absurd and must be dismissed. Consequently, I do not consider that a blade can be construed as a bucket.
I generally agree with the construction of bucket given by Mr Holland and note that it is also generally consistent with the everyday meaning. I will use the everyday meaning in my construction.
Inventive Step
Legal Principles
Subsection 7(2) states that an invention is taken to involve an inventive step unless it would have been obvious to a person skilled in the art in light of the common general knowledge (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).
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.”
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’.”[34]
[34] [2020] FCA 1686 at [116]-[117] (citations omitted).
In their case the Opponent seeks to draw analogies with Firebelt Pty Ltd v Brambles Australia Ltd & Anor [1998] FCA 1737; 43 IPR 83 (“Firebelt”). In particular they cite:[35]
“As to the suggested solution, the applicant did not identify a particular lid opening device. The claim is wide enough to encompass all such devices. Although the specification identifies one type and speaks of others, there is nothing to suggest that the generality of the claim should be so read down. Thus the inventive step which is claimed is simply use of a lid opening device of any kind located on the loading mechanism. At least if the lid is to be opened at an early stage in the process, Mr Idwall Richards considered that location to be obvious. The expert evidence establishes that such a location was already known in the industry. Once geographical proximity is established between the lifting mechanism and the bin, it is, in my view, obvious that it is a possible location for the lid opening mechanism. This is the effect of much of the expert evidence which I accept.
It is true that in his evidence, Mr ldwall Richards asserted that the timing of the use of the lid opening device was critical to his invention, his suggestion being that it should occur quite late in the process. That, however, is not an element of his claim. Had he claimed the timing of the lid opening operation as, for example, an alternative to the use of the butterfly plate, it may be that he would have demonstrated an inventive step in comparison to the prior art base.”
[35] OS at 43 (emphasis removed)
In order to minimise the possibility of ex post facto analysis, I will utilise the problem-solution approach. The Applicant and the Opponent have utilised this approach to a large extent.
The Problem
Dr Hillier, for the Opponent, identified that the problem that the application addresses is primarily:
“How do you measure wear of a ground-engaging wear part whilst the earth working equipment is in operation and how do you determine if a ground engaging wear part has become detached?”[36]
[36] Hillier1 at [21]; Holland at 11.3
Noting prior art already known to him, Dr Hillier further considered that the problem related to “How do you improve camera location to monitor the state of a wear part?”[37]
[37] Hillier1 at [21]
The Applicant agrees with the initial problem. However, they disagree that the related problem is the problem addressed by the application. They submit that a number of sensors other than cameras are contemplated in the specification, and that the sensors are considered at a variety of sensor locations.[38]
[38] Holland at 11.4
As described in paragraphs 16 - 19 above, the specification is directed towards methods to identify when wear parts, such as teeth, are lost from ground engaging tools and detect their levels of wear. Both experts have indicated that the problem of measuring the wear of a wear part and of detecting wear part detachment are known problems in the art.[39] Therefore, as per AstraZeneca[40], knowledge of the problem and knowledge of relevant prior art may be attributed to the PSA. While the specification describes prior art that includes cameras being mounted to the boom, and that problems exist with the technologies used to do so, it also describes other systems in which cameras are not used at all. The result is that I cannot arrive at the related problem posed by Dr Hillier without importing portions of the solution. I will proceed on the basis that the problem to be solved is that identified in paragraph 65 of this decision.
[39] Hillier1 at [21]; Holland at 11.3-11.4
[40] AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99 (AstraZeneca) at [203]
The Common General Knowledge
In their submissions on Common General Knowledge (CGK) the Opponent has referred to numerous paragraphs which they wished to rely on under Reg 5.23. As will be discussed, the content of the Reg 5.23 material does not change the outcome of this decision and I do not refer to them.
In the EIR and OS the Opponent has submitted that at least the following were CGK at the Priority Date:
i. Vision based systems which counted pixels to measure the length of GET were known.[41] The Opponent submits that image recognition software that could detect the boundaries of wear parts was not part of the CGK.[42]
ii.A range of sensors were known to be mounted on earth working equipment. Several example sensors were given, including camera systems and laser sensors. It was also submitted that “each of these sensors would be well known to those working in the mining industry” at the Priority Date, “including their mode of operation and the data each sensor was suitable for measuring.” [43] (boldface emphasis removed)
iii.Inclinometers, accelerometers and inertial measurement sensors were well known to be attached to buckets.[44]
iv.Wireless transmission of data was known in the art.[45]
Image recognition software
[41] Hillier2 at [54]
[42] OS at [49]-[53]
[43] EIR at [52]; OS at 47(h) citing Holland at 5.5
[44] Hillier2 at [56]
[45] OS at [59]-60]
The Applicant agrees that vision-based systems which count pixels were CGK. Noting there is contention about edge detection capabilities of the software (see s40 section), the Applicant further submits that there were well known software packages which could perform each of the image recognition functions, and that the edge detection functions were also common general knowledge. Mr Holland states that he was aware of different image analysis software packages which could perform such functions, and refers to software commercially available via National Instruments. [46]
[46] Holland at 11.11-11.13
Dr Hillier infers that the National Instruments software referred to by Mr Holland was LabView, and states that he had used this software in other projects. Dr Hillier also states: [47]
“The Lab View (sic) software contains (and did contain at the Priority Date) various library elements for processing images. These library elements provide the user with the ability to apply different algorithms to the image, but it is up to the user to understand how these algorithms work and apply them appropriately, or, alternatively, try many to find one that has the desired effect. Other image processing software provides similar functionality. I am not aware of any software that would have been available at the Priority Date that could detect the boundaries of the various wear parts and parts of the bucket in the image without significant testing or extremely specialised expert knowledge.”
[47] Hillier2 at [33]
While contested by the Opponent[48], the evidence of Dr Hillier appears to partially support the position of the Applicant. Dr Hillier indicates he is aware of the software provided by National Instruments, and that there are numerous libraries which can be called upon to apply particular algorithms to process images. He notes that this is also true for other image processing software. While Dr Hillier does state that significant testing or specialised expert knowledge is required, this does not automatically prohibit it from being common general knowledge.
[48] OS at 51-54
I also note Mr Holland’s comments on edge detection within images being well known in the art are corroborated by two of the citations relied upon for Inventive Step (detailed below) which also utilise vision processing systems. D2 paragraphs [0152]-[0154] outline, at a similar functional level to the current application, pattern matching algorithms which use the boundary (i.e. edge) of the bucket in their calculations. D3 paragraph [0022] similarly detects how far a tooth extends from the bucket edge. In doing so, it must be able to detect the edge.
I am thus convinced that vision recognition algorithms which could perform edge detection would have been well known, at least at a functional level, by the PSA. Based on the evidence provided, the comments from both experts, and the references in prior art, I conclude that image processing, and the subset of edge detection algorithms, are part of the CGK which would be known by the PSA.
Sensors and their operation
The Applicant does not disagree that the sensors were well known in the art, that they were mounted to earth working equipment, or that their mode of operation were well known in the art. Rather the Applicant appended a limitation to the point by stating that it was not well known to mount the sensors to the bucket of the earth working equipment.[49]
[49] AS at 8.15-8.16, 9.20-9.21
The Applicant has not presented any evidence which counters that provided by Dr Hillier that sensors were well known in the art, that they were mounted to earth working equipment, and that their mode of operation were well known. I have no reason to dispute this evidence. Therefore, with no evidence or submissions to counter Dr Hillier’s evidence about sensors being known in the broader point without the appended limitation, I accept that the sensors themselves, their general application to earth working equipment, and their modes of operation would be CGK to the PSA. I address the Applicant’s submission about mounting sensors to the specific location of the bucket in the following item.
Use of inclinometer, accelerometers, and inertial measurement units on buckets
In relation to the addition of inclinometers, accelerometers, and inertial measurement units to buckets, the Applicant submits that these sensors are not suitable for the claimed invention, and that they were not aware of commercial products which used such sensors on buckets. They further submit that no examples have been given of adding any sensors to buckets.[50] I also note the comments by Mr Holland that:[51]
“At paragraph 21 of the Hillier Declaration, Dr Hillier states:
‘[t]he opposed application takes a well-known sensor, in the form of a camera or laser scanner, and locates that sensor on the bucket in an obvious location to allow for maximum time where the wear parts are in view of the camera, and additionally have the camera in a fixed reference frame with respect to the wear part.’
I agree that the advantages outlined by Dr Hillier in this statement are advantages provided by the invention having a sensor on the wear part. However, I disagree that a bucket is an ‘obvious location’ for a sensor. From my understanding of the common general knowledge, and the comments on common general knowledge provided in the declaration of Dr Hillier in the 221 Opposition, people in the field were not putting sensors on buckets at the priority date. This is supported by the prior art cited in the oppositions to the Opposed Application and the 221 Opposition, of which only a single document showed a sensor on a bucket. If it was obvious at the priority date, I would expect that there would be more people who were regularly putting sensors on buckets. I know that there were many people using sensors, but they were not putting them on buckets. This indicates to me that this was not an obvious location.”
[50] AS at 8.18-8.19
[51] Holland at 11.5
Hillier1 refers to the placement of sensors such as cameras and laser scanners on buckets.[52] The response by Mr Holland could be construed to only include such sensors. However, I note that the document referred to in the parent decision was a radio-based sensor - not a camera or a laser scanner. The explicit referral to that decision indicates that Mr Holland was referring to the entire class of sensors and not just the camera or laser scanner referred to by Dr Hillier. Thus, I will read only this paragraph of Mr Holland’s in the most general sense of “sensor” and will include accelerometers, inclinometers, and the like.
[52] Hillier1 at 21
The experts have only provided statements that placing sensors on buckets is or is not well known. No other forms of evidence, such as similar prior art documents, has been submitted. I acknowledge the Opponent’s criticism that Mr Holland has not worked in the field for some 13 years before the priority date of the patent.[53] This does limit his ability to state what was known in the art regarding the placement of inclinometers, accelerometers and inertial measurement units on buckets at the relevant time. However, in contrast, Dr Hillier has only provided statements that it was an obvious location to place them.[54] This aligns with the Applicant’s caution that Dr Hillier does not always provide corroborative documentary evidence to support his views.[55]
[53] OS at 15
[54] Hillier1 at 21, Hillier2 at 55-56
[55] AS at 6.6, 8.18
It is surprising that no citations, products, or examples are given to strengthen Dr Hillier’s evidence on the matter. One may have been sufficient. Thus, while this is the professional opinion of each expert, I have no evidence which shows that sensors were placed on buckets in the 13-years post Mr Holland’s employment in the industry. I prefer the evidence of Mr Holland on this matter. In the absence of sufficient evidence to shift the balance in favour of the Opponent, I can only find that the submitted evidence is insufficient to satisfy me that the use of accelerometers, inclinometers, or any other sensors on a bucket was so well known in the art that it could constitute CGK.
Wireless sensors and data transmission
The Applicant’s submissions on the use of wireless data transmission is generally appended with the additional limitation of locating the sensor on the bucket. That is, they address the point of wireless data transmission when the sensor is located on the bucket. Of direct relevance to the immediate point is that Mr Holland states that:
“… in my experience it is the general approach of people in the field, both now and at the priority date, to have a system be wired unless it was not possible because of the additional issues that arise for a wireless system. … Merely because wireless technology exists is not motivation to use it in a particular system in the harsh mining environment.”[56]
[56] Holland at 11.30
From this, and from oral submissions, the Applicant appears to accept that wireless sensors and wireless data transmission were known generally in other fields. But they do not accept that wireless technology was CGK in GET systems or in environments where excavators are used.
Regarding the initial point advanced by the Opponent, both experts and both parties appear to be, at least tacitly, in agreement that wireless technology was used other fields. I consider that, in and of itself, the use of wireless technology to enable data transmission from sensors was likely to be CGK. However, noting that I found it was not CGK to mount sensors to a bucket, it must follow that I must find that transmitting data wirelessly from a sensor mounted to a bucket is not CGK. For reasons which will become obvious later, it is not necessary to determine whether wireless data transmission was CGK in the specific field of mining or excavating equipment.
Summary
In summary, I consider that the following items would have been common general knowledge to the PSA:
·Image recognition systems and the algorithms to operate them were well known in the art and available from many sources;
·A range of sensors were well known in the art, they could be mounted to many locations on earth working equipment (excluding the bucket), and their operation and data properties were known; and
·It was routine for data to be sent from sensors via wireless communications (to another device) in a broader sense, but not when the sensor was mounted to a bucket.
CGK alone
The Opponent has submitted that:[57]
[57] AS at 62-64
“In essence, the inventive concept claimed in the Application is the use of known electronic sensors on a generic piece of equipment (earth working equipment with a bucket and generic wear parts), using known wireless technology to monitor a well-known critical problem in the field (lost or worn wear parts), using generic (and otherwise uncharacterised) devices (a remote device and/or a PLD) to serve a known function (generate an alert).
There was nothing inventive about this concept, and the claims do not descend to claim anything extending beyond this broad concept.
In light of the state of the CGK outlined above, the key questions for consideration are:
(a) was it obvious to place a generic sensor on a generic bucket?
(b) was it obvious to use wireless technology in the monitoring system?”
Broadly, I agree these are the relevant questions but, in addition to the above points, and being mindful of Aktiebolaget Hassle v Alphapharm Pty. Ltd [2002] HCA 59[58], I add that not only must each individual feature be part of the common general knowledge, or obvious based on the CGK, but the combination must also be obvious in light of the CGK.
Was it obvious to place a sensor on a bucket?
[58] at [119]-[120]; (2002) 212 CLR 411 at 455
Despite finding there was not enough evidence to say that it was common general knowledge to place sensors on a bucket, this does not necessarily mean that it was not obvious to do so with a sensor capable of detecting wear and wear-part detachment when the PSA is faced with the problem at hand.
The Opponent has submitted several additional points regarding whether locating a sensor on a bucket was obvious.
i. While there were commercial impediments to mounting cameras on existing buckets, Dr Hillier notes that it would have been trivial for a bucket manufacturer to do so.[59]
ii.The bucket location was an obvious, ideal location for the sensor because it would have a clear line of sight of the wear members. There were known issues with the wear part moving relative to the sensor, and by mounting the sensor on the bucket these problems would be overcome.[60]
iii.The system that Mr Holland describes when presented with the overall problem also contained the concept of mounting to the bucket.[61] The Opponent specifically refers to specific portions within the final paragraph of Holland at 11.6. I present the paragraph in full.[62] (emphasis added to highlight the submissions of the Opponent)
“The operation of the excavators would also affect the type and location of the sensors. For some types of excavators, a sensor located on the cab may provide appropriate information for monitoring a bucket and/or wear part. Sensors could also be located on the stick or boom of the excavator, or on the connections between those parts. These sensor locations could provide useful information on the performance of the system, as well as providing a good line of sight to the bucket and/or wear member. Alternatively, the sensors could be located on the bucket itself. This would be useful particularly for excavators that dig away from the cab of the operator and which therefore have limitations in what an operator can see. However, such a sensor would be exposed to harsh conditions, so would need to be capable of surviving those conditions. The sensor would also need to capable of operating in this conditions. (sic) 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."
iv.That any matters solved in the body of the specification, but which are outside the scope of the claimed invention, have no bearing on whether an inventive step is present.
[59] Hillier2 at [57]
[60] AS at [68]; Hillier1 at [21]; Hillier2 at [39]; oral submissions
[61] AS at [69]-[70] citing Holland at [11.6]-[11.7]
[62] Holland at [11.6] : final paragraph
In response, the Applicant re-iterated that no evidence was provided to establish that sensors of the kind required to monitor the wear parts had been mounted to buckets.[63] In relation to the commercial impediments, the Applicant submitted that there were other challenges – notably the potential for damage to the sensors, as identified by both experts.[64]
[63] AS at [8.18]-[8.19], [8.24]
[64] AS at [8.25]-[8.26]
The Applicant emphasised that a number of problems were identified immediately following Mr Holland stating that the bucket was one possible location for mounting a sensor. They also note that Dr Hillier identified similar problems in locating the sensor on the bucket.[65]
[65] Hillier2 at [58]
When I consider the entirety of the paragraph quoted from Mr Holland in paragraph 89(iii) above, and the non-reproduced portions preceding it, it becomes clear that Mr Holland engaged in a general brainstorming activity performed after being supplied with a problem. In the quoted paragraph each of the possible locations to place sensors, including the boom, stick, joints, and bucket are listed. With regards to the bucket, Mr Holland states that this would be a useful sensor location for excavators that dig away from the cab. However, this is immediately tempered by a discussion of numerous challenges, related to the harsh environment in and around the bucket, which would also need to be overcome should the sensor be mounted to the bucket. He then listed a number of advantages for remote (i.e. non-bucket) sensor locations. It could be inferred that Mr Holland discounted this option following the expected damage to the sensors, or the need for additional solutions to the problems related to the harsh environment there.
While not addressed by Mr Holland, presumably because of his possible discounting of mounting the sensor to the bucket during the brainstorming, a fixed frame of reference could be an advantage of mounting the sensors to the bucket. But this advantage could only be realised should the idea of mounting on the bucket not have been dismissed first.
Each expert has, in my view, supplied their evidence with the benefit of their own area of strength. Mr Holland has stronger expertise in sensors and their programming – and would thus pursue software options which would avoid damaging the sensor. Dr Hillier is a mechanical engineer who would find methods to protect the sensors to simplify the programming and the resulting analysis.
In the overall problem of developing a system which detects changes to wear parts or wear part detachment while the earth working equipment was in operation, a PSA with extensive skills in sensors and monitoring systems would, in all likelihood, be consulted initially. The core of any proposed solution lies in how the detection and monitoring occur. The skills of a mechanical engineer would be required should it be identified that a mechanical solution to protect or mount the sensors was required.
Noting the apparent mechanical disadvantages of mounting on the bucket, and apparent advantages of mounting elsewhere, I am unable to conclude that an expert in sensors and monitoring systems would be directly led to mount sensors to the bucket of an excavator. They would be more likely mount the sensors in a safer location and seek a software solution. I am further persuaded that the lack of evidence in mounting sensors to buckets, where the sensors are of the type required to monitor wear parts, particularly during regular operation, indicates that it was not an obvious choice which the PSA would have arrived at. It follows that I am unable to find that relocating the sensor to the bucket lacks an inventive step.
I also differentiate the present case from the Opponent’s submissions on Firebelt. Dowsett J notes in Firebelt that the inventor, and possibly the invention, lay with integers which appear in the specification but not in the claims. In the present case, an inventive step resides in moving the sensors onto the bucket to detect wear of wear parts and to detect wear part detachment. This concept is encompassed in the claims. While additional problems may be present in performing this relocation, and possibly further inventive steps are required to address these additional problems, I do not consider that the inventive step arises solely from features outside the claims.
Both of the independent claims have the sensor mounted to the bucket. I find that all claims are inventive in light of common general knowledge alone.
Was it obvious to use wireless sensor technology in the monitoring system?
Based my findings above in relation to placing sensors on a bucket, it is not necessary to identify whether it would be obvious to transmit data from sensors wirelessly in the mining and excavating fields.
D2 – US 2010/0142759 A1
D2 is titled “A system and method for detecting a damaged or missing machine part”. It is apparent that D2 addresses a very similar problem as the present invention. For example, the abstract describes the invention as follows:
“A system and a method for detecting a damaged or missing machine part. The system includes an image capturing device for capturing images of the machine and a processor for processing the captured images. The system may further include a sensible output for providing an indication of a damaged or missing machine part. The method includes capturing images of the machine against a background which moves relative to the machine over time, selecting a pair of time-separated images from the captured images, generating a displacement image from the pair of images, comparing the machine from the displacement image with a machine model, and identifying a damaged or missing machine part from the comparison of the displacement image with the machine model. The method may further include providing a sensible output which indicates a damaged or missing machine part.”
D2 discloses at paragraphs 82 and 83:
“The bucket tooth line of the bucket is analyzed on each upswing of the mining shovel and compared against a base-case scenario of a fully intact tooth line. When a tooth is partially or completely broken or missing, the system automatically alerts the shovel operator by a sensible output in the form of a visual alarm on a touch screen monitor.
With the system of the invention, shovel operators are alerted to partial or complete tooth breakage as soon as the shovel comes into the viewing range of the camera.”
D2 paragraphs 114 and 128 disclose that the camera is preferably placed on the shovel boom, and the method of preparing the system for use given paragraphs 138-144 envision the camera being mounted on the boom and imaging the bucket.
Opponent’s submissions
The Opponent has stated “D2 discloses every integer of claim 1 of the Application, save for locating the sensor on the bucket.”[66] They outline where each feature is disclosed in D2 and provide submissions on why relocating the sensor to the bucket is obvious, these being:
·The location of the sensor is merely a preferred embodiment;
·The location of the sensor is not critical, rather choosing a location which best achieves the requirements for the invention to operate optimally is the key consideration;
·Moving sensors to the bucket would provide a constant frame of reference; and
·Nothing in the claimed invention relates to protecting the sensor from wear, and therefore considerations regarding damage to the camera should be of lower weight.
[66] OS at 86
During oral submissions the Opponent outlined areas where they considered the delegate in the parent decision to have erred, or to have supplied a less than ideal explanation. As a general observation, I am not bound by the previous decision, and the specific context of the present matters is not the same. I will only consider the evidence before me and submissions regarding that evidence.
Applicant’s submissions
The Applicant does not disagree that each of the features, except for locating the sensor on the bucket, is disclosed in D2. Rather they submit that:
“This particular issue was already addressed in the Parent Application, where D2 was said to disclose every feature of claim 1 of the Parent Application except for locating the sensor on the bucket.”[67]
“The Opponent has not made any submissions as to why that finding is not applicable to the question of the obviousness of the modification of the exact same prior art document in the exact same way (being that it was not obvious). The Applicant says there must be good reason to come to a different conclusion in this Opposition.”[68]
[67] AS at 8.42
[68] AS at 8.44
The Applicant re-emphasised that D2 does not disclose that a sensor could be located on the bucket. They further submitted that just because the claims of a document are not limited to the case of having the camera on the boom, that does not make it obvious to put the camera elsewhere.[69]
Consideration
[69] AS at 8.47
D2 does not disclose any location other than the boom to position the camera. Further, the software of D2 is clearly designed to operate with a bucket which moves relative to the camera. While the location of the camera could theoretically be positioned at an alternate position which would also need rotation compensation, such as on the stick or the cab, D2 is also silent on these as alternate locations to consider. Considering that D2 has explicitly used software which accounts for rotations, and that there is no mention on positioning the camera at any location other than the boom, I agree that D2 only envisages the camera being located on the boom.
In relation to the selection of the best location for the sensors, I partially agree with the Opponent. The inventors of D2 indicate that they are trying to obtain what they consider to be the optimal image for their invention, and D2 paragraph 138 identifies that the orientation of the camera is important for optimal functioning. However, I do not see how this advances the Opponent’s case. There is a large step between optimising a given system for the conditions it is faced with, and then choosing to redesign the system by moving the camera closer to the source and, according to the Opponent, onto the bucket. This reasoning completely ignores options such as choosing a camera with a smaller viewing angle, addition of lenses, the implementation of techniques to minimise dust obscuring the view, and several other options. Further, I am reminded of the comments by Dr Hillier and Mr Holland regarding the harsh environment at the bucket.[70] While D2 paragraph [0091] indicates that the camera needs to be made rugged, it is only in the context of being mounted to the boom. Should the camera of D2 be moved to the bucket as advanced by the Opponent, there would be an additional need to address challenges related to robustness and obscuration of the sensor.
[70] Holland1 at 11.6; Hillier2 at [58]
While it is true that a fixed frame of reference (due to sensors being placed on the bucket) would simplify some calculations required for the processor, this is at the expense of not necessarily being able to sense the bucket at the same points in time in the digging cycle. In view of this, I consider any difference in the view, such as having a constant field of view, or a particular point in time of the digging cycle to perform the sensing, to be a neutral consideration. The PSA would merely utilise whichever option they were presented with after following other design criteria. The lack of a constant frame of reference is unlikely to be something which would motivate the PSA to redesign the system such that the software did not need to account for rotations.
As per my reasons in the CGK alone, I do not agree with the remaining points presented by the Opponent. Given D2, I do not see why the PSA would have modified the system such that the sensors were on the bucket, particularly noting that there are significant robustness and obscuration challenges which would need to be overcome.
I therefore cannot conclude that the PSA would, as a matter of course, modify the invention of D2 such that the sensors were positioned on the bucket. As both independent Claims 1 and 2 contain this limitation, it follows that the claims possess an inventive step over D2.
D3 – US 2005/0261799 A1
D3 paragraph [0003] outlines the same problem as the present application. It discloses, in part:
“The engaging portions on work tools may wear or become detached from the work tool such that the work machine is unable to perform its function. If the engaging portions become detached from the work tool other problems may occur on the worksite.”D3 Figure 3, shown below, mounts sensor 12 to the cab. Control system 14 uses software to determine whether a wear part has detached and whether a wear part has deteriorated beyond a particular threshold. If either of these two events occur, then an alert is sent to the operator.
The Submissions
The Opponent submitted similar reasons to D2 in support of their contention that D3 deprives at least some of the claims of inventiveness. In short, they submit:
· The location of the sensor is merely a preferred embodiment, and the location of the sensor is not claimed;
· A problem occurs when the sensor cannot accurately sense the position of the wear members, and the control system needs to be adapted to move the bucket to a region where it can be sensed accurately;
· Moving sensors to the bucket would provide a constant frame of reference; and
· That the use of wireless sensors would be obvious should the sensor be relocated.
Unsurprisingly, the Applicant provided similar responses to those given for D2. During the hearing they also explained that D3 solved the problem of not always having a clear line of sight to the wear members by implementing a control system to move the bucket to a position where the laser scanner can accurately detect the length of the teeth. The PSA would therefore, in their view, have no reason to modify the system of D3 to account for rotations.
Consideration
Initially, I note that the “view” of the bucket differs between D2, the present application and that of D3. The present application and D2 both view the wear members and any material within the bucket from an angle which can observe inside the bucket. While not specified in D3, the location of the sensor in D3 would give the option of sensing both from an internal angle (when the bucket is oriented similar to what is shown in Figure 3 or downwards) and from an external angle (such as when the top of the bucket is parallel to the ground, such as when holding and transporting excavated material). While D3 Figure 5 (not shown) could let me infer that sensing via the internal orientation is preferred, there is no discussion of any orientation preference. Alternately, Figure 5 could merely be a 3D reconstruction from the acquired sensor data at multiple orientations. There is insufficient information in D3 to draw any specific inferences on preferred viewing orientations.
Again, there is a leap of logic which must be taken for the PSA to consider moving the sensor from the cab to the bucket, and a series of additional problems are required to be solved by the PSA. Any benefits of a fixed frame of reference would not be considered by the PSA if the problems associated with the relocation exceeded any potential benefit. As noted by the Applicant[71], D3 has solved the problem via the control system 14 being adapted to move the bucket to a position where the laser scanner can accurately detect the length of the teeth. It also has different viewing options to the present application.
[71] Oral submissions, discussing D3 [0035]
I therefore cannot see any reason why the PSA would move the sensors to the bucket. It follows that the application is inventive with respect to D3.
D6 – US 6470606 B1
Opponent’s Submissions
The Opponent submitted the following regarding D6:[72]
“D6 is entitled ‘Vehicle Having Apparatus for Monitoring Forward Portion of Blade and Method of Monitoring Forward Portion of Blade’. The abstract explains that the invention involves the use of a ‘television camera for picking up an image of a forward portion of a blade, and a display device on which an image of the forward portion of the blade monitored by the forward monitoring apparatus is displayed’.
The vehicle and method disclosed in D6 can be explained by reference to D6 Figure 1:
D6 refers, by way of background, to prior art which involves the arrangement of light emitting elements on ‘side plates for a bucket for the excavating working’ and notes this allows for ‘the filling up-condition of the excavated sediment in the bucket’ to ‘be recognised’. D6 then explains that such prior art does not disclose how to recognise ‘the excavating condition on the front of the forward working machine’, and in particular, ‘the sediment scooping condition of the blade at an actual working during the excavating’. D6 is directed at solving this problem. D6 discloses the use of a monitoring device (16), such as a ‘monitor camera such as a television camera set’, which can be ‘moved to a position suitable for picking up an image of’ the ‘front side surface’ of the blade (3), which has a cutting edge (26). An image of the front portion of the blade is sent to and displayed on a display device (25) in the operation room (4) of the machine.”
Consideration
[72] OS at 112-114 (emphasis in original, footnotes removed)
However, there are limits to what constitutes ‘everything’ within the scope of a claim. Austal Ships[106] provides:
“Austal proposed a number of hull shapes for the purpose of establishing absence of utility. The only ones that are relevant are those that fit within the requirements of claim 1 as I have construed it. Further, I do not consider that lack of utility is established by a consideration of the characteristics of hull shapes that are totally impractical and contrived and would not be considered by any experienced or competent naval architect. The claims are not directed to readers in a vacuum, they are directed to and are to be understood by the skilled workers in the field. That is the person who construes them, in a commonsense way. It would be artificial to assess utility in a way that ignores the fact that a design that is theoretically or mathematically within the parameters of the claims would never be contemplated for use by the skilled naval architect wishing to design a hull for a multi hulled vessel capable of speeds greater than 30 knots. A design that no naval architect would adopt would not be the appropriate test on the question of utility.”
[106] Austal Ships Pty Ltd v Stena Rederi Aktiebolag [2005] FCA 805 at [240] (“Austral Ships”)
Nor is it essential that every single integer of an invention be present in a claim should the absent integers be common general knowledge – Britax:[107]
“553 The primary utility consideration is whether the invention as claimed will achieve the result promised by the specification, the result itself being useful. However, it must be recognised that if the appropriately skilled addressee is able to supply an omitted feature, which is part of the common general knowledge, then provided the invention achieves the promise with that feature supplied, the claim will not lack utility.
[107] Britax Childcare Pty Ltd v Infa-Secure Pty Ltd (No 4) [2015] FCA 651; (2015) 113 IPR 280 (“Britax”)
Similarly, if the claim contains a selection of integers, and a non-useful combination of those integers can be selected, then the PSA should avoid doing so and the invention will not lack utility – Inverness Medical:[108]
“Where a claim omits a feature which, on a proper construction of the claim, is left for the reader to supply, the claim will not be invalid for want of utility if the feature is one that the skilled addressee could reasonably be expected to supply and the claimed invention is useful after the feature is supplied. A similar approach should be adopted where a claim leaves a choice to the skilled reader to select features to include in the invention. In such circumstances, the fact that it is possible to make a purposeful selection of inappropriate features with the intention of making something useless does not imply that the claim lacks utility.”
[108] Inverness Medical Switzerland GmbH v MDS Diagnostics Pty Ltd [2010] FCA 108; (2010) 85 IPR 525 at [118] (“Inverness Medical”)
The promised benefits
In my letter to both parties I identified that the specification appeared to promise multiple things. The relevant portion of the letter states:[109]
[109] Letter to both parties, bullets changed to enumeration
“The claimed invention, and the specification which supports them, promises multiple things. These include:
a)A monitoring system which detects the amount of wear in a wear part;
b)A monitoring system which detects when a wear part has detached;
c)An alerting system which warns the user of either of the above items;
d)Protection of the bucket via the supply of warnings to replace wear parts; and
e)Protection of downstream equipment due to early detection of lost wear parts.
Noting that this is a monitoring system which needs to detect wear of a wear part and to detect wear part detachment, there are elements of durability and operational frequency which must also be considered. The promise of protecting downstream equipment implies that the system monitors wear part detachment at a rate where material deposited by the bucket can be intercepted and inspected before it reaches the downstream equipment. Therefore the monitoring must be done frequently, such as once on every digging cycle, and preferably continuously. It is also well known that earth working equipment would be used for up to and including a full work shift. It follows that the monitoring system must be robust enough to operate without interruption throughout at least a full work shift.
Similarly, the promise of providing timely reminders to replace the wear parts (i.e. when needed, but not more often than necessary) may imply that the monitoring system must be robust enough to withstand as long as, or longer than, the expected life of the wear part or the service interval for the bucket. If this were not true, then replacement or maintenance of the monitoring system would cause more interruptions than it seeks to avoid.”
The promises I indicated in the letter can be identified from paragraphs [08]-[10] of the description. The Applicant submitted that claim 2 is to a different aspect of the invention where it does not need to detect wear in the wear part. They submitted that, as per Ronneby Road,[110] not all claims need to satisfy all of the promises.[111] I also note that Ronneby Road contains considerations of whether the promise is to be read as a composite promise, where all of the promises must be met, or where promises should be read disjunctively. The present case requires use of both options. I address this below following analysis of the proposed promises from my letter and the modifications to them following the submissions by both parties.
Promises a) – c)
[110] ESCO Corporation v Ronneby Road Pty Ltd [2018] FCAFC 46; (2018) 358 ALR 431 at [303] (Ronneby Road)
[111] SIC at 3.4 – 3.6
The Applicant disputes that a) to c) are promises as the letter indicated they arise from the claims only. In the alternative, they submit that the promises are necessarily met due to their forming part of the claims. The Applicant also notes that not all promises apply to all of the claims.
Promises a) to c) can be determined from [08]-[10] of the specification, and they can also be observed in features of the claims. I agree with the Applicant that not all promises apply to all claims, and only the promises relevant to the respective claims are considered for evaluating whether the promises have been met or not.
Promises d) – e)
The Applicant disputes that promises d) and e) are valid promises. Instead they label them as “potential benefits” or “potential advantages”[112]. Their submissions argue that
“these are merely potential advantages of the alert aspect of the Opposed Application. Any actions taken by the operator subsequent to the issuing of the alert do not form part of the invention itself. They are not, in themselves, statements that the present invention will provide ‘promise’ (d) and (e).”[113]
[112] SIC at 3.7; SIR at 4.1
[113] SIC at 3.9
They also submit that the promises cannot be valid as an operator could potentially ignore the alerts, and thereby prevent the invention from achieving the promise.
The Opponent disputes the Applicant’s approach. With respect to promise d), and paragraph [09] of the specification, the Opponent has said that:
“… This is not a case where the specification lists a number of potential benefits, of which the benefit identified is one. The benefit identified in paragraph [09] underpins the entire basis for the invention with respect to monitoring wear part presence. That is, the purpose of the monitoring system in this instance is to enable a user to identify when a wear part is lost so that it can be replaced and the missing wear part does not damage downstream equipment, which will in turn decrease production and create unnecessary downtime. A monitoring system which monitors the detachment of a wear part but does not meet this promise, could not be said to be useful.”[114]
[114] SIA at 15
The Opponent makes similar submissions about e) based on paragraph [10].
While I agree that any action taken subsequent to the issuing of an alert is not part of the claimed invention, the wording of paragraph [09] contains language that indicates the “potential benefit” must be able to occur. Paragraph [09] in its entirety states:[115]
“In one aspect of the invention, electronic sensors are used in conjunction with programmable logic to determine if wear parts are present on the earth working equipment. If a wear part is not present the programmable logic triggers an alert. The alert notifies the operator when a wear part has been lost from the excavating equipment. This allows the operator to take the necessary actions to ensure that the missing wear part is replaced and that the missing wear part does not damage downstream excavating equipment. As examples, the electronic sensor may be a camera, a laser range finder, an ultrasonic sensor, or another distance measuring sensor. In one preferred construction, the camera is chosen from a group consisting of 2D cameras, 3D cameras, and infrared cameras.”
[115] Specification at [09], emphasis added
It is abundantly clear that the alert is for the express purpose of informing the operator that there is a missing wear part which needs to be replaced and that the missing wear part does not damage downstream equipment. As the Applicant correctly argues, whether the user acts on the alert is a separate matter. Promise d) as formulated takes this into account using the qualifier “via the supply of an alert to replace wear parts”. It is also noted that paragraph [04] of the specification identifies that it is a known problem in the art that a detached wear part can damage downstream equipment. There are no other paragraphs in the entire specification which discuss potential applications or reasons for using the invention outside of this “potential benefit”. It is thus clear that it is a promise that the specification aims to address.
Promise e) uses a different qualifier in “due to early detection of lost wear parts”. The qualifier would be better expressed as “via the supply of an alert of a detached wear part”. That is, the promise only applies in so far the issuing of an alert that a wear part has detached. Similar to promise d), paragraph [05] of the specification describes a known problem in the art which this aspect of the invention is striving to address. No other applications are disclosed as being envisaged. I consider that e), following the above modification, is also a promise of the invention.
Following the modification to promise e), I note that promise c) becomes redundant - it is explicitly incorporated into promises d) and e). This indicates that the formulation of items c) to e), outlined in paragraph 190 above, needs modification to:
·Protection of the bucket and other equipment via the supply of an alert to replace worn wear parts; and
·Protection of downstream equipment via the supply of an alert of a detached wear part.
Promise f) ?
The Opponent agrees with each of the above promises and submits that there is an additional promise. That being “f) the monitoring system enables an increase in production and avoids unnecessary down time.” The Opponent lists several points in [04]-[05] of the specification indicating that this is also a promise, and notes that it is consistent with the paragraphs following the list in my letter.
The Applicant presents several reasons why f) should not be considered to be a promise. The most pertinent of these are:
· The Opponent references the background of the specification, and no other part of the specification;
· The extracts are preceded by the qualifier “for example”, and contain “can lead” and “may decrease”;
· The extracts are discussing known limitations in the art, not a promise to be overcome; and
· Any improvement in production or reduction in downtime is merely a potential advantage of the monitoring system.
While I acknowledge the Opponent’s submissions that there are parallels with the contents of my letter, I cannot conclude that f) is also a promise of the invention. Firstly, it is possible that by following the alerts an increase in downtime might occur. Just because a wear part has passed its recommended use does not mean that it will detach and damage downstream equipment. Nor does it guarantee that productivity would increase. Further, the combination of the cited portions of the specification being in the background section describing known problems in the art and the qualifiers indicating they are examples preclude me from finding otherwise.
Summary and revised promises
In view of the above, I conclude that the following are the promises which the application seeks to meet within the various claims of the invention:
i.A monitoring system which detects the amount of wear in a wear part attached to a bucket;
ii.A monitoring system which detects when a wear part has detached from the bucket;
iii.Protection of the bucket and other equipment via the supply of an alert to replace worn wear parts; and
iv.Protection of downstream equipment via the supply of an alert of a detached wear part.
As was noted above, not all claims aim to address all of the promises. The claims aim to address different aspects of the overall invention, and I should only assign the promises to the claims which are attempting to address those. The Opponent agrees that the promises related to wear detection do not apply to Claim 2.[116] Based on the claimed invention I conclude that:
·Claims 1 and 4 must satisfy a composite promise comprising all of (i) – (iv);
·Claim 2 must satisfy a composite promise comprising only (ii) and (iv);
·Claim 3 must satisfy a composite promise comprising only (i)-(iii);
·Dependent Claims 5-15 must satisfy the same promise as whichever claim they are dependent upon.
[116] SIA at 14
The evidence
Mr Holland and Dr Hillier both provided evidence of the harsh environment at the bucket, and that any sensor system would need to be protected to limit the risk of damage to the sensor. As part of Mr Holland’s evidence he states that:[117]
“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.
…The operation of the excavators would also affect the type and location of the sensors. For some types of excavators, a sensor located on the cab may provide information for monitoring a bucket and/or wear part. Sensors could also be located on the stick or boom of the excavator, or on the connections between those parts. These sensor locations could provide useful information on the performance of the system, as well as providing a good line of sight to the bucket and/or wear member. Alternatively, the sensors could be located on the bucket itself. This would be useful particularly for excavators that dig away from the cab of the operator and which therefore have limitations in what an operator can see. However, such a sensor would be exposed to harsh conditions, so would need to be capable of surviving those conditions. The sensor would also need to capable of operating in this conditions. As such, that approach would pose particular challenges not present with remote sensors. For example, a camera may not be able to effectively operate in that environment due to the level of dust interfering with its operation. I would therefore need to carefully consider the aims of the system, the environment and the types of sensors when ascertaining the type and location of sensors to assess the conditions of a bucket and/or wear parts."[117] Holland at 11.6 (in part, emphasis added)
For the Opponent, Dr Hillier states:[118]
“In paragraphs 37 and 38 of my First 221 Declaration (reproduced in paragraph 39 above), I explained that attempting to locate the camera (or another 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.”
[118] Hillier 2 at 58 (emphasis added)
In the context of addressing Inventive Step, the Applicant also submitted that there were numerous difficulties related to relocating the sensors to the bucket. These relate to the points above. Of note is that the Applicant states: [119]
“… Mr Holland does not suggest that it would be straightforward or necessarily possible to overcome the issues he had identified, or that it was achievable to produce such a system.”
[119] AS at 8.25-8.26, citing Holland at 58.
As noted above, when addressing D6, Mr Holland stated:
"[D6] is for a bulldozer. I do not consider a bulldozer blade to be a bucket. I consider that the concept of the invention in [D6] will likely face problems in trying to adapt it to an excavator bucket. The way the blade engages with the material, and the way the material flows up the blade, is specifically suited to a bulldozer. Excavator buckets do not generally have the same flow (depending on the type of excavator and excavator bucket) so material would be expected to come in contact with the camera and potentially damage it before material from below pushed the camera out of the way." [120]
and
“[In D6] The position of the camera itself is able to be changed to ensure that the camera is not damaged by material coming up on the blade. Whether this type of system could be used for bucket excavators would depend on the type of excavator, as such a location may not be suitable for providing a full range of visibility and protection of the camera.”[121]
[120] Holland at 11.32 (in part, emphasis added)
[121] Holland at 10.3 (in part, emphasis added)
Both experts note the high potential for damage when the sensor is mounted to the bucket and that other factors, such as dust, would interfere with the operation of the monitoring system. They both note that this is a harsh environment, and that “some kind of shielding would be required” or that “the hardware employed in the system would need to have been made robust”.
Further, as the sensors in independent claim 2 and in dependent claims 8-13 (when dependent upon independent claim 1) perform the monitoring using line-of-sight principles, it is imperative that they be able to utilise those functions for the sensing. Should excess dust or other debris obscure the sensors, the system would also be rendered non-functional.
Does the invention deliver the promised benefit?
Initial Concerns
In my post-hearing letter I identified that I had concerns regarding whether the promised benefits were met in the absence of any form of sensor protection, and in the absence of some form of obscuration prevention. The promises imply that the system needs to be operational over a period of time which exceeds at least one work shift, and the evidence strongly indicates the system will be damaged within this timeframe. This implicit time requirement arises from the “system for monitoring” limitation within the claims. As discussed in my construction above, and as described by both experts, the monitoring needs to be performed over a period of time.
It seemed clear that, where the sensor is protected and has features that address issues of excess dust and other forms of obscuration there was enough evidence that the system would satisfy the above promises.
However, based on the evidence before me, it also seemed clear that, when a system had no form of protection or obscuration prevention (for line of sight sensors), it was more likely than not that sensor damage or obscuration would occur within a relatively short time interval and the monitoring system would be rendered non-functional. The harsh, extreme environment noted by the experts strongly indicated that this time frame would be lower than the one shift I identified above. It followed that the claims, which do not define any form of protection or obscuration prevention, would not be useful over their entire scope due to the lack of protection from damage or allowing useful images to be taken, and would lack utility.
Applicant’s submissions
As noted above, I have slightly modified the promises. While it might be said that these were not the promises the Applicant was addressing, in my opinion, the Applicant’s response covered the broader concept of where those promises were considered independently. As such, there was no need to ask for further submissions on the modified promises.
The Applicant’s submissions primarily revolve around the construction of the claims. In relation to claim 1 they argue that promises (i) and (ii) are implicitly met as the functional claiming requires the necessary functions to occur, as per No Fume[122]. They submit the same reasoning applies for claim 2, noting that it seeks to address fewer promises.
[122] No Fume Ltd v Frank Pitchford Co Ltd (1935) 52 RPC 231 (“No Fume”) at 233
Regarding promises (iii) and (iv) the Applicant submits that the preamble necessitates that a system for monitoring earth working equipment is suitable for use on earth working equipment and in the environments for which earth working equipment operate. They also submit that the use of functional claiming necessitates that the benefits are achieved. They state:
“For example, claim 1 requires an alert be given ‘when the wear part has detached from the bucket and/or when a degree of wear reaches a predetermined amount’, not only sporadically or at some later time than when those events occur. Accordingly, the claimed invention will necessarily provide:
(d) protection of the bucket or improved performance via the supply of timely warnings to replace the wear parts; and
(e) protection of downstream equipment due to early detection of lost wear parts.”[123][123] SIC at 3.11
In the alternative, they submit that the PSA would not choose to work the invention in a way which led to a lack of utility, and that they would add the necessary features to ensure the promises were met.[124]
[124] SIC at 3.7
The Applicant also cautions that there is no explicit evidence which confirms or refutes that promises (iii) and (iv) are met. They submit the evidence given by the experts indicates that they were both aware of the need for protection of the sensors, and that no difficulty was identified in the implementation of any potential solutions. Of particular note is that the Applicant argues:
“What is also clear from Dr Hillier's evidence is that, despite being specifically asked how he thinks the invention works, and whether he could make the invention work based on the specification, he did not highlight any issues with the invention working, or not achieving any particular promise, based on the sensor location. Instead, his comments relate entirely to the use of images to determine loss or wear of the wear parts. Despite all the issues he has raised in his evidence, he does not raise any concerns regarding the absence of a specific reference to sensor protection in the claims. In such circumstances, the Delegate should be very wary of making a factual finding regarding utility bereft of any supporting expert evidence in circumstances where Dr Hillier plainly set about to find every fault he could in the Opposed Application.”[125]
Opponent’s Submissions
[125] SIR at 4.7, referring to Hillier1 at [22]
The Opponent referred to the claim construction provided by both experts to indicate that neither expert considered that there was a limitation in the claims regarding sensor protection or obscuration prevention. They submitted that “on the evidence, claim 1 and claim 2 include a sensor secured to the bucket in any configuration, including without any protection or obscuration prevention.”[126] While they conceded that the figures and preferred embodiments contain details which go towards addressing sensor protection and avoiding sensor obscuration, they argue that a preferred embodiment cannot be used to introduce a qualification into the invention.
[126] SIA at 20
The Opponent also disputes Applicant’s submissions regarding the use of functional claiming. The Opponent states that such an approach is contrary to the established principles of claim construction.
Regarding the Applicant’s submission that the PSA would add a missing feature with a view to making the invention work, the Opponent submitted that the case law which had done so added only obvious features which were part of the CGK. Citing the evidence of Mr Holland[127], the Opponent submitted that the evidence (provided by the Applicant) was such that placing sensors on a bucket could not be considered CGK. Thus:[128]
“if the skilled person did not consider it possible at the priority date to successfully implement a sensor on a bucket, it cannot be said that they would have known which configuration and features to adopt, and how to adopt them, in order to properly protect the sensor from damage and prevent obscuration so that the promises of the invention would be met. … The addition of a complex configuration ensuring adequate protection and obscuration prevention of a sensor in harsh environmental conditions, is a long way from the kinds of matters which the courts allowed to be ‘added’ to avoid a finding of lack of utility.”
[127] SIA at 25, citing Holland1 at 11.5
[128] SIA at 26
The Opponent also submitted that the present case could be distinguished from Austral in that the lack of utility is not due to a theoretical set of parameters which the PSA would not implement. Rather, the specification disclosed embodiments which would allow for protection and obscuration prevention, but that the claims were intentionally not so limited.
Consideration
I am not persuaded by the Applicant’s desired purposive construction. The use of the word “for” applies to the suitability of the sensor to perform the desired function. That is, for detecting wear of a wear part and for detecting detachment of a wear part. It also assists in the identification of a sensor which is suitable for these particular tasks. But use of the word “for” does not relate to functionality which is orthogonal, or foreign, to the generally accepted functionality of that sensor. The robustness of a sensor is not a function which the sensor provides and is therefore not included by mere functional claiming.
Regarding the Applicant’s contention that the PSA would not work the invention in a way which led to a lack of utility, and that they would add any missing feature to ensure the claimed invention worked,[129] I note that the case law clearly demonstrates there are limits. Austral Ships[130] and Britax[131] both describe that the type of information which may be added belong to the CGK.
[129] Austral Ships at [216]
[130] Austral Ships at [236]
[131] Britax at [553]
However, as I identified in the inventive step section above, the addition of sensors to the bucket is not part of the CGK. A consequence of this is that the requisite knowledge of how to protect sensors when mounted to a bucket does not form part of the CGK. I do not see any basis for importing any form of sensor protection into the claim. It follows that the scope of the claim must include sensors which have no form of protection as well as those which do have protection.
Similar reasoning applies to the prevention of obscuration. I cannot conclude that any potentially known methods, when mounted to the bucket and subjected to the harsh environment there, are part of the common general knowledge.
The Applicant submitted that the PSA could make the invention work when provided with a copy of the specification. That may well be true, but this submission is a matter for consideration under s40 and, for that matter, is closer to the repealed fair basis considerations than the present form of the Act. For the purposes of establishing whether the claimed invention has utility I may not import any features into the claims to make the invention work unless they are part of the CGK. The features related to sensor protection and obscuration prevention cannot be added to the claim. The claims must stand or fall as is.
The Applicant cautions that I should not make “a factual finding regarding utility bereft of any supporting expert evidence where Dr Hillier plainly set about to find every fault he could in the Opposed Application.”[132] I do not believe I have done so. The Opponent did not pursue the ground of lack of utility – it has been raised under s60(3). It is therefore unsurprising that questions related to utility were not put to Dr Hillier. The evidence of both experts is that the environment in/near the bucket poses a harsh/extreme environment with a high potential for damage. Both experts noted the need for protection to avoid this damage. The evidence implies that the claimed system would, in all likelihood, be rendered non-operational within a short period of time without any protection. The evidence shows that the promises identified above cannot be met.
[132] SIR at 4.7 (in part)
Whilst not being determinative the Applicant, in arguing their position, also submitted that:[133]
“… such a sensor would only quickly become damaged if claim 1 would not be read and understood by a person skilled in the art to include, or alternatively to require an implementation that included, a sensor that was protected in some way. That is not the case for the reasons set out in the ESC and further below.”
and
“… as to the assertion that Mr Holland does not suggest the sensor would be sufficiently protected, it was clear to Mr Holland that such protection would be necessary.”[134]
[133] SIR at 3.9, (in part)
[134] SIR at 4.5 (in part)
The Applicant has hung their hat, so to speak, on their purposive construction being correct. For the reasons described above, I do not agree. I further do not agree that any missing features would be added to by the PSA. This is contrary to those cases where the case law has allowed CGK to be added to the claim.
It follows that Claims 1 and 2 do not meet their promised benefits. The dependent claims do not add any features which would ensure that the promise is met over such a timescale. I therefore find that the invention of claims 1-15 lacks utility.
Conclusions
The opposition is successful. Claims 11-13 and 15 do not comply with s40(3). The claims include types of sensors within the scope that are not supported by matter in the specification. For the same reasons claims 11-13 and 15 do not comply with s40(2)(a). The invention of claims 1-15 also lack utility as the promised benefit is not met over the entire scope of the claims.
The specification contains content which could potentially form the basis for an allowable amendment to overcome these findings. I therefore give the Applicant 3 months to propose suitable amendments to overcome these findings.
Costs
Costs usually follow the event, and no reasons are apparent on why I should vary them. Costs are awarded against the Applicant, ESCO Group LLC, in accordance with Schedule 8.
Dr David Carberry
Delegate of the Commissioner of PatentsAnnex 1: Claims
1. A system for monitoring earth working equipment, the system comprising:
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.
2. A system for monitoring earth working equipment, the system comprising:
a bucket with a digging edge secured to the earth working equipment;
a ground-engaging wear part secured to the digging edge;
at least one electronic sensor secured to the bucket with a clear line of sight to the wear part for detecting whether the wear part has detached from the bucket, and wirelessly transmitting such 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.
3. The system of claim I wherein the at least one electronic sensor also detects wear in the wear part and wirelessly transmits such information, and the programmable logic device determines degrees of wear in the wear part.
4. The system of claim 3 wherein the programmable logic device causes an alert to be given when the degree of wear reaches a predetermined amount.
5. The system of any of claims 1, 3 or 4 including a database with information on the geometry of the wear part, wherein the programmable logic device uses the geometry from the database with the transmitted information to estimate the remaining useful life of the wear part.
6. The system of any of claims 1 or 3-5 wherein the programmable logic device uses vision recognition software to determine the length of the wear part.
7. The system of any of claims l or 3-6 wherein the programmable logic device uses vision recognition software to determine a degree of wear in the wear part.
8. The system of any of the preceding claims wherein the at least one electronic sensor includes an optical camera.
9. The system of any of the preceding claims wherein the at least one electronic sensor includes an infrared camera.
10. The system of any of the preceding claims wherein the at least one electronic sensor includes a thermal imaging camera.
11. The system of any of the preceding claims wherein the at least one electronic sensor includes an ultrasonic sensor.
12. The system of any of the preceding claims wherein the at least one electronic sensor includes a laser range finder.
13. The system of any of the preceding claims wherein the at least one electronic sensor includes a laser interferometer.
14. The system of any of the preceding claims wherein at least one of the electronic sensors transmits an image of the wear part.
15. The system of any of the preceding claims including a database with information on a plurality of ground-engaging wear parts that are securable to the bucket, wherein the programmable logic device uses vision recognition software and database information to determine which wear part is secured to the bucket.
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