CQMS Pty Ltd v ESCO Group LLC

[2024] APO 17

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

CQMS Pty Ltd v ESCO Group LLC [2024] APO 17

Patent Application:             2018201710

Title:Wear part monitoring

Patent Applicant:                ESCO Group LLC

Opponent:CQMS Pty Ltd

Delegate:Greg Powell

Decision Date:  8 May 2024

Hearing Date:  20 September 2023, by Video Conference

Further submissions filed 25 January 2024, 13 February 2024 and 27 February 2024

Catchwords:  PATENTS – opposition to the grant of the patent under s 59 – novelty – claims have novelty – inventive step – conventional thought teaches away from the invention – “technical prejudice” – claims are inventive – support – claims encompass within them subject matter which is clearly beyond what is disclosed – claims not supported – clear enough and complete enough disclosure – not clear how teaching of the specification could be extended across the scope of the claims – no clear enough and complete enough disclosure –utility – required features to achieve promise of the invention missing – claims lack utility – subsection 60(3) – opposition successful – opportunity to amend – costs awarded

Representation:                   Counsel for the applicant: Tom Cordiner KC

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

Counsel for the opponent: Peter Creighton-Selvay

Patent attorney for the opponent: Adam Luxton and Alexia Mayer of James & Wells

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application:             2018201710

Title:Wear part monitoring

Patent Applicant:                ESCO Group LLC

Date of Decision:                8 May 2024

DECISION

The opposition is successful. Claims 5, 6, 7, 9, 10, and 12–14 lack support. These claims include arrangements that are not contemplated by the specification. The claims do not comply with section 40(2)(a) as there is no clear enough and complete enough disclosure of the claimed invention. The invention of claims 1–14 lacks utility as the claims do not have all the necessary features which would ensure that the promise of the invention is met.

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

Costs awarded against the applicant, ESCO Group LLC.

REASONS FOR DECISION

Background

1. Australian patent application 2018201710 (the application) in the name of ESCO Corporation, which later became ESCO Group LLC (the applicant), was filed on 9 March 2018 as a divisional of Australian application 2014262221 (the parent application).  The application ultimately claims priority from US provisional application 61/908458 with a priority date of 25 November 2013.

2. A request for examination was made on 9 March 2018.  The application was accepted on 10 March 2020 and acceptance was advertised on 26 March 2020.

3. A Notice of Opposition was filed on 26 June 2020 by CQMS Pty Ltd (the opponent).  A Statement of Grounds and Particulars (SGP) was filed on 28 September 2020 (26 September 2020 being a Saturday).  Evidence in Support (EIS) was filed on 24 March 2021 following an extension due to the COVID pandemic.  Evidence in Answer (EIA) was filed on 30 June 2021.  Evidence in Reply (EIR) was filed on 30 August 2021.  An amended SGP was filed on 9 September 2021 providing further particulars with respect to novelty, section 40, and manner of manufacture.  The amendment was allowed on 11 November 2021.  Consequently, all the references in this decision to the SGP are to the SGP as allowed.

4. On 23 September 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, the evidence was properly in reply, and they did not intend to exclude it.  The applicant requested to be heard on this point and a decision[1] issued on 9 May 2023 finding the EIR to be properly in reply.

   [1] CQMS Pty Ltd v ESCO Group LLC [2023] APO 26

5. The opponent filed a written summary of submissions (the opponent’s written submissions) on 6 September 2023.  The applicant filed their summary of submissions (the applicant’s written submissions) on 13 September 2023.  I have found these documents to be helpful.

6. Following the hearing, on 12 December 2023 I wrote to the parties seeking submissions on matters of concern I had regarding whether the claims met the requirements of section 40 and section 18(1)(c) of the Patents Act 1990, where these concerns had not been raised by the opponent.  The applicant provided submissions in chief (the applicant’s further submissions) about my concerns on 25 January 2024, the opponent provided submissions in answer (the opponent’s further submissions in answer) on 13 February 2024, and the applicant provided submissions in reply (the applicant’s further submissions in reply) on 27 February 2024.  While the applicant sought to be heard orally in relation to these issues, I determined that an oral hearing was not necessary given the written submissions.

   Applicable law

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

8. 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[2] or, where appropriate, give the applicant a reasonable opportunity to amend the relevant specification to remove any ground of opposition[3].  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[4].

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

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

   [4] The Act, subsection 60(3)

   Grounds of opposition

9. 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.

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

    a)Lack of novelty;

    b)Lack of an inventive step;

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

    Family members – other oppositions

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

12. The family history is somewhat fraught.  The parent application was subject to an opposition filed by the opponent.  Following a number of decisions[5], the parent application was granted in amended form.  Some of the evidence provided for the present opposition repeats some of the evidence supplied in the opposition to the parent application.

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

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

    The invention as described

    Background

14. 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 notes 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.

15. Cameras on shovel booms have been used, but only have a clear view of the wear members during a portion of the digging cycle.  Consequently, it is possible that 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.

16. 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

17. 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.  In another embodiment, sensors are used take measurements so that programmable logic can use these measurements to determine how full a bucket is loaded during a digging operation.  The specification never explicitly states that analysis of past and current loads for each digging cycle is carried out to determine the bucket and/or operator performance so as to determine bucket health and to optimise performance.  Nevertheless, I am prepared to accept that some analysis might be carried out as part of the monitoring process; although what processing is actually done is left as an exercise for the reader.

18. 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, and infrared cameras, laser range finders, ultrasonic sensors, or other distance measuring sensors, accelerometers, pressure sensors, or similar impact sensors, strain gauges, or load cells.  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 CPUs, controllers, PCs and programmable logic controllers (PLCs) are given as examples of the programmable logic, specifics of the programming of these elements are not.  As such, it is clear that the implementation of the concept within the programmable logic is left entirely to the reader.

    Claims

19. The specification ends with 14 claims, 3 independent claims and 11 dependent claims.  The independent claims are as follows:

    1.A bucket for use with excavating equipment comprising walls defining a containment portion for gathering earthen material to be excavated, a digging edge, wear parts secured to the digging edge, and at least one electronic sensor for producing an image, and secured to one of the walls to monitor the health of the bucket and wirelessly transmit the monitored information.

    9.A bucket for use with excavating equipment comprising walls defining a containment portion for gathering earthen material to be excavated, a digging edge, wear parts secured to the digging edge, and at least one electronic impact sensor secured to one of the walls to monitor the health of the bucket and wirelessly transmit the monitored information.

    12.A bucket for use with excavating equipment comprising walls defining a containment portion for gathering earthen material to be excavated, a digging edge, wear parts secured to the digging edge, and at least one electronic strain sensor secured to one of the walls to monitor the health of the bucket and wirelessly transmit the monitored information.

    The complete claim set is in the Annex to this decision.

    Embodiments

20. The sensor used in the invention is discussed using Figure 8:

    The specification states that the sensor 27 may be housed in an enclosure 31 in locations on the wear part that engages and moves the ground to be excavated.  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.  The specification states that the enclosure 31 protects the sensor from the harsh mining environment.  However, it provides nothing further as to the enclosure’s construction.  Sensor 27 is mounted via vibration damping mounts 53 inside a mounting unit 55 located within an enclosure 31.  If required, an aperture 33 is provided 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 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. 

21. With respect to claim 1, one embodiment showing the mounting of the camera on the bucket is shown in figure 9:

    The electronic sensor 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 wall 41 in the aperture 37, or a wiping tool could be used.  In another embodiment, the wall 41 could be replaced by a spool of transparent film that could be wound on to expose a clean section when the film covering the aperture 37 becomes too dirty and opaque.

22. Once the received image signals are processed the result can be displayed on a human/machine interface (HMI).  Figure 17 shows one example where an alert has been issued for a missing wear member:

    The display 73 has a picture 77 displaying each wear member 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 making (i.e. a triangle) on the wear member’s base has become visible when the wear member detached.  The point wear (on the top left of the screen) is determined by assessing how many grooves and/or ridges cut, cast, or forged into the top exterior surface of the wear member remain.  The ridges extend from the outer end of the wear member number, and the number decreases as the wear member wears away.

23. There is no explicit figure(s) for claims 9 and 12.  With respect to positioning of a non-image sensor, the specification states:

    “The monitoring system may be equipped with electronic sensors that are capable of determining high impact events on the bucket digging edge (i.e., higher than experienced during normal digging operation).  For example, the monitoring system may utilize an accelerometer, strain gauge, load cell, or pressure sensor to determine peak impacts (not shown).  Programmable logic may record the time of the high impact event.  The results of the high impact events may be communicated to the equipment operator or to a wireless device …

    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 … In an alternative embodiment, some or all of the additional electronic equipment may be housed on the excavating equipment or in a remote location (not shown).  For example, one or more electronic sensors 27 may be located in one or more locations in/on the bucket and the electronic sensors 27 may communicate via a wire or wirelessly with other electronic sensors and/or the additional electronic equipment within the cab of the excavating equipment.  In alternative embodiments, one or more electronic sensors 27 … may be located on or in a second wear part(s) that are attached to the first wear part(s) that engages and moves the ground to be excavated.  The first wear part(s) may be, for example, a bucket, a blade, a truck body, or the like and the second wear part(s) may be, for example, a point, an intermediate adapter, an adapter, a shroud, a nose, a lip, a wear runner, a truck liner, or the like.  The electronic sensor(s) in the second wear part may communicate with electronic sensor(s) on the first wear part, the second wear part(s) and/or with the additional electronic equipment that may be located on the first wear part or located remote to the first wear part.  As with the electronic sensor(s) in the first wear part, the electronic sensor(s) in the second wear part may communicate via a wire or wirelessly.”[6]

    Little more than this is said.

    [6] Specification at [52] and [54]

    Evidence

24. EIS consists of:

    ·A declaration of Dr Nicholas Hillier (Hillier 1) dated 23 March 2021, accompanied by exhibits NH-1 to NH-13

    EIA consists of: 

    ·A declaration of Rodney Clarke (Clarke) dated 24 June 2021, accompanied by exhibit RKC-1

    ·A declaration of Hezekiah (Ky) Holland (Holland) dated 29 June 2021

    EIR consists of:

    ·A declaration of Dr Nicholas Hillier (Hillier 2) dated 26 August 2021, accompanied by exhibit NH-14 

    The person skilled in the art

25. 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.”[7]

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

26. 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.[8]  The experts providing evidence in an opposition are proxies for this PSA.

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

    Experts

27. Dr Hillier is currently the Technology Development Manager at CR Digital, a business unit within CQMS Razer Pty Ltd, which is a related entity of the opponent.  He notes[9] that he has given evidence in the opposition to the parent application and in oppositions associated with the other divisional applications.  Dr Hillier comments[10] 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.

    [9] Hillier 1 at [5]

    [10] Ibid at [11]–[12]

1. Dr Hillier also states[11] that, while completing his PhD and afterwards, he worked for VIPAC Engineers and Scientists in areas relating to vibration and acoustics analysis and the like, followed by a role in the Mining Robotics Team of the Autonomous Systems Lab of CSIRO researching applications in the mining industry in ranging sensors, localisation and mapping, and vehicle and manipulator path and trajectory planning for automatic systems.  This was followed by a stint at LC Engineering developing products that performed sensor-based monitoring and analysis of the operation and performance of excavating equipment, as well as ground engaging tool monitoring systems monitoring for tool loss and breakage.  LC Engineering merged with CQMS Razer Pty Ltd and Dr Hillier’s role in CR Digital focusses on products that involve noncontact sensing technologies.

   [11] Ibid at [13]–[16]

2. Mr Clarke is currently the General Manager of the Advanced Technology team at the applicant.  As with Dr Hillier, Mr Clarke has given evidence in the opposition to the parent application and in oppositions associated with some other divisional applications.  Mr Clarke notes[12] that the Advanced Technology team focuses on identifying upcoming technology trends in the mining industry, working to produce prototypes of new operational technology products.  Prior to working for the applicant Mr Clarke comments[13] that he was Products Manager at P&H MinePro, where he was responsible for products including shovels, drills, draglines, and electronical motors.  Prior to P&H MinePro, Mr Clarke worked as a Maintenance Manager for iron ore miner Mt Gibson Iron, and in the maintenance area for the Bloomfield Group, which mined coal in Australia.

   [12] Clarke at [2.2]

   [13] Ibid at [2.3]–[2.4]

3. Mr Clarke states that:

   “[d]uring my time at P&H MinePro, the company was, in part, working on sensing systems for monitoring fixed mining products, such as shovels.  I consider that sensing systems on fixed mining products have different considerations than sensing systems for ground engaging tools (GET), because fixed mining products are generally more stable and have access to running power.  However, as part of my duties in that role, I was aware or made aware by my team, of the monitoring systems that other companies supplying the mining industry were announcing or using, including sensing systems on GET.  Consequently, I consider that I have a very good knowledge of what monitoring systems were available in the mining industry in Australia prior to November 2013.”[14]

   Mr Clarke was provided an extract of Hillier 1 and asked to provide answers.  The extract comprised paragraphs [17], [19]–[61], and exhibits NH-2 and NH-3 of Hillier 1, which relate to the background to the invention set out in the application and the common general knowledge (CGK).

   [14] Ibid at [2.6]

4. Mr Holland states[15] that he is currently employed as a consultant at Holland Consulting and assesses new manufacturing enterprises in Alaska and recommends process design, product design and workforce preparation strategies.  Prior to his employment at Holland Consulting, Mr Holland was employed by the applicant as a Design/Project Engineer and then as a Marketing Manager in the light mining and construction wear products divisions respectively, and as a Site Manager in the applicant’s San Diego facility, being involved in the design of hydraulic hammers.  He notes that, while at the applicant, he was involved in projects involving the redevelopment of buckets for different types of excavating equipment.  He states:

   “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.”[16]

   [15] Holland at [2.2]

   [16] Ibid at [3.2]

5. Mr Holland also states[17] that, since leaving the applicant in 1999, he has been employed by the University of Alaska Anchorage as the Director of Applied Technologies, teaching courses in Technology and Career and Technical Education; by Frontier Sales Inc as a sales representative, representing manufacturers of petroleum and water products; and by Envision CmosXray LLC (later QSA Global Inc) as General Manager and then as Operations Manager.  In the period after the priority date of the application, Mr Holland has been employed 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.  Mr Holland also states that, in this post-priority date period, he has established a number of start-up companies – iA3, which was an “internet of things” technology start-up which applied the process used in the development of a monitoring system for a water treatment system, including considering appropriate sensors for the particular application, and integration of those sensors together with appropriate electronics and software, to many different types of businesses; EncycloMEdia, which is involved in projects involving taking information from existing data sources, analysing that data and using it in new ways; and AlaskaV3, which is an Alaskan social impact start-up company.

   [17] Ibid at [2.5]–[2.12]

6. Mr Holland does not set out what is CGK in the relevant art.  He states that he was instructed:

   “that the Clarke Declaration including the extract, comprises the common general knowledge of monitoring systems for excavator buckets available in the period up until November 2013.”[18]

   [18] Ibid at [11.3]

   Opponent’s submissions

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

8. With respect to Mr Holland, the opponent particularly noted that he left the applicant in 1999 and had not worked with wear parts or excavating equipment since then.  In the opponent’s opinion, as Mr Holland lacked experience in the design and engineering of excavation equipment, wear parts and related monitoring systems in the 13 years immediately before the priority date, this limited the weight that could be placed on his evidence.  They also noted that this lack of experience was reflected in Mr Holland’s statement in his evidence that he was asked to assume that the Clarke Declaration was the CGK in the period up until November 2013.

9. With respect to Mr Clarke, the opponent submitted that he did not appear to have had any experience working with wear parts, or monitoring systems relating to wear parts, at the priority date.  They noted that Mr Clarke states P&H MinePro were working on sensing systems for monitoring fixed mining products, and submitted that Mr Clarke does not state that he was involved in this work.  The opponent also submitted that Mr Clarke’s work on fixed mining equipment was not relevant to the subject of the invention since Mr Clarke had stated that:

   “… sensing systems on fixed mining products have different considerations than sensing systems for ground engaging tools …”[19]

   [19] Clarke at [2.6]

10. The opponent submitted that it appeared that Mr Clarke’s corporate sales role with the applicant since leaving P&H MinePro meant he was removed from the field in the years leading up to the priority date and his role involved products other than wear parts.  In the opponent’s submission, this limited the weight that could be placed on Mr Clarke’s evidence.

11. In the opponent’s submission:

    “… where there is a conflict between the evidence of Dr Hillier, on the one hand, and Mr Holland or Mr Clarke, on the other hand, as to the state of CGK or what was known or obvious in the field, the evidence of Dr Hillier ought be preferred.  He was, in fact, the only witness working in the field, and familiar with relevant monitoring systems, at the Priority Date.”[20]

    [20] Opponent’s written submissions at [15]

    Applicant’s submissions

12. The applicant submitted that Dr Hillier’s evidence “should be viewed with caution”[21] given his employment with CQMS Razor Pty Ltd.  The applicant believed, given the application concerned technology which was in direct competition with the technology that Dr Hillier was developing in his role, his evidence could not be considered independent and could not be accepted without “any corroborative documentary evidence”.[22]  They submitted that Dr Hillier’s knowledge about automated monitoring systems to identify the loss or breakage of GET arose from work commenced in mid-2013 at LC Engineering to develop an automated system.  The applicant submitted that there was no basis to assume that the examples Dr Hillier put forward on automated systems were, in fact, widely used or known at the priority date.

    [21] Applicant’s written submissions at [6.6]

    [22] See ibid

13. For Mr Clarke, while noting that he is employed by the applicant, the applicant submitted that the criticism they levelled at Dr Hillier could not be levelled at Mr Clarke because his evidence simply addressed what Dr Hillier said was known at the priority date, and did not provide an opinion on the invention in the application.  As to the opponent’s submission that Mr Clarke’s current role did not involve wear parts, or monitoring systems for them, they pointed to his statement that his role “staying knowledgeable on what was happening in the Australian mining industry in relation to these products.”[23]

    [23] Clarke at [2.3]

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

    “extensive experience gained while employed by the Applicant in designing GET bucket systems, including the placing of data loggers, strain gauges and accelerometers on newly developed products to assist in redevelopment of buckets for different types of excavating equipment.”[24] 

    [24] Applicant’s written submissions at [6.9]

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

    “there is nothing to suggest that, for the purposes of this Opposed Application, the mechanics of GET design and the environments in which they were used, materially changed before the priority date in November 2013.”[25]

    [25] Ibid at [6.10]

16. During the hearing, the applicant argued against the opponent’s submission regarding Mr. Holland’s lack of experience in the design and engineering of excavation equipment before the priority date.  The applicant disputed this submission, stating that the opponent had failed to provide evidence of any significant changes or developments in the relevant field of GETs, their operational environments, functionalities, and wear characteristics.

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

18. The applicant also noted that the opponent adopted the position of both Mr Clarke and Mr Holland at various points in their submissions, which seemed incongruous if their evidence was without merit.  The applicant further noted that in CQMS 1, where the same experts gave evidence, the delegate stated:

    “Dr Hillier, Mr Holland and Mr Clarke have each have varying levels of experience in the field of mining.  They each provide expert evidence regarding the invention and common general knowledge at the priority date.  I am satisfied that all three have provided relevant evidence.”[26]

    [26] CQMS 1 at [35]

    Consideration

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

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

20. When it comes to establishing the CGK, I note Mr Clarke’s statement quoted by the applicant that he stayed “knowledgeable on what was happening in the Australian mining industry in relation to these products”.  The products that he stayed knowledgeable about were disclosed in the sentence immediately preceding the quoted one.  Mr Clarke states that these were “a suite of products including shovels, drills, draglines and electronical motors.”[27]  While not quite as drastic as the opponent’s submission in the hearing that this statement was “an assertion that there was unidentified monitoring of unidentified products by unidentified people”[28], it is not entirely clear from this statement alone of what Mr Clarke was knowledgeable of for these products.  There is a question about whether he was aware of monitoring systems. 

    [27] Clarke at [2.3]

    [28] Hearing transcript at 17:38

21. However, I note that Mr Clarke’s evidence addressing that of Dr Hillier includes statements such as:

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

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

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

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

    ·“Dr Hillier refers to issues with RFID/radio based systems … I am aware of a product called the Tooth Fairy which was known to me prior to November 2013 … I was aware of the Tooth Fairy as ESCO was running a trial of the product with Rio Tinto in mid to late 2013.  I believe this was one of the first evaluation trials of this product.”[29]

    [29] Clarke at [3.3]

22. Mr Clarke also states:

    “… as part of my duties in that role [at P&H MinePro], I was aware or made aware by my team, of the monitoring systems that other companies supplying the mining industry were announcing or using, including sensing systems on GET.  Consequently, I consider that I have a very good knowledge of what monitoring systems were available in the mining industry in Australia prior to November 2013.”[30]

    [30] Ibid at [2.6]

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

24. As to Mr Holland, it has to be observed that the applicant’s submission (cited at [41] above) that he was involved in the placing of data loggers, strain gauges and accelerometers on newly developed products while employed by the applicant in designing GET bucket systems does not appear to have come from the evidence of Mr Holland. I could not find statements corresponding to this anywhere. Nevertheless, it is clear from his evidence that he was involved in monitoring systems for GETs up until 1999. There is also some force with regards to the applicant’s submission that it was not that well established that differences (if any) in the art between when Mr Holland ceased employment with the applicant and the priority date would make Mr Holland’s evidence unreliable. In any event, his experience with sensors and monitoring systems can be of use to me in this decision. Consequently, his evidence cannot be dismissed.

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

    Principles of construction

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

    “It is well settled that the Court should, from the outset, approach the task of patent construction with a generous measure of common sense.  The Court must place itself in the position of a person skilled in the relevant art, being the subject matter of the patent.  From this perspective, the patent is to be read as a whole, in the context of the specification and in light of the prevailing common general knowledge and state of the relevant art at the priority date.”[31]

    [31] [2013] FCA 214; 100 IPR 451 at [139].

27. The task of construing the specification is undertaken from the viewpoint of a person skilled in the art and the prevailing common general knowledge at the priority date.  The person skilled in the art is a hypothetical non-inventive person or team likely to have a practical interest in the subject matter of the invention.[32]

    [32] Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980 at [70]-[72].

28. The Full Court in Airco Fasteners Pty Ltd v Illinois Tool Works Inc.[33] recently reiterated the principle that experts can give evidence on the meaning which those skilled in the art would give to technical or scientific terms and phrases and on any unusual or special meanings that would be given by skilled addressees to words which might otherwise bear their ordinary meaning.[34]  The Court has also stated that it is to place itself in the position of some person acquainted with the surrounding circumstances as to the state of the art and manufacture at the time.[35]  However, it is for the Court, not for any witness, however expert, to construe the specification.[36]  A similar approach is taken in matters before the Commissioner.

    [33] [2023] FCAFC 7 at [48].

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

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

    [36] Sartas No 1 at [485]-[486].

29. In the present matter there were terms in the claims that are important to the determination of this opposition.  These were:

    (i)“bucket”;

    (ii)“health of the bucket”; and

    (iii)“to monitor”

    “bucket”

30. There was discussion at the hearing as to whether the blade that might be present on earth working equipment, such as a bulldozer, fell within the scope of “bucket” within the claims.  The opponent submitted that it was wrong to exclude “blade” from “bucket”.  Their argument[37] focussed on a citation (US 6470606 – D6) used by the opponent which showed a sensor mounted to a bulldozer blade.  The opponent noted that the blade is described in the citation as performing “ground levelling work and “soil excavating work”.  The opponent noted that the Macquarie Dictionary defined “excavate” to mean: “to make (a hole, tunnel, etc.) by removing material” and/or “to dig or scoop out (earth, etc)”.  Noting that the excavating function of the blade in D6 was the same as the function performed by the bucket of claim 1, the opponent contended that a blade was a bucket.

    [37] Opponent’s written submission at [137]–[139]

31. The applicant submitted that buckets and blades were listed as separate things in the application.  They also note that the bucket in the claims was defined as having “walls defining a containment portion for gathering earthen material to be excavated.”  The applicant submitted that a blade did not have a “containment portion”.  They noted that Mr Holland stated:

    “a bulldozer blade and an excavating bucket function differently.  A bulldozer blade pushes the material in front of it, including scraping the ground before it, so as to spread or move the material.  In contrast, an excavating bucket is filled (eg by scooping) and moves the material to a different location where it is deposited.”[38]

    [38] Holland at [10.3]

1. I agree with the applicant.  As noted by the applicant, and notwithstanding the words of the claims, the citation, the Macquarie Dictionary and Mr Holland, the application consistently lists a “bucket” and a “blade” as being distinct.  As one example, paragraph [53] of the application states:

   “In accordance with one embodiment of the invention the monitoring system 25 having at least one electronic sensor is incorporated with the bucket … In a non-bucket application, the monitoring system may be preferably mounted and or integrated to a base member supporting the wear part.  The base member may be, for example, a truck tray or a blade. … if the monitoring system is fixed to the blade of a dozer or grader the monitoring system may monitor the presence and/or health of the end bits on the blade or the leading edge of the blade.” (my emphasis)

   For this application, a “bucket” is not a “blade”.  A disclosure of a sensor on a blade, while of interest when discussing inventive step, is not determinative of the construction of “bucket” here.

   “health of the bucket”

2. Both parties agreed that this term was very broad.  The opponent noted that Dr Hillier had stated that “‘health’ was not (and still is not) a widely used term in relation to buckets or wear parts”[39], that “the term did not (and still does not) have a precise, commonly understood meaning”.[40]  They also noted Dr Hillier had stated that “the term ‘health’, when used in relation to either a bucket or wear parts, could mean how worn the bucket or wear part is, or whether or not the wear part or bucket is broken, or many other things”[41].  The opponent also noted that Mr Holland had indicated that “‘health’ has a broad definition”[42].  Furthermore, the opponent drew my attention to the decision of the delegate in CQMS 3, offering a construction of “health”. 

   [39] Hillier 1 at [55]

   [40] See ibid

   [41] Ibid at [56]

   [42] Holland at [11.22]

3. The applicant relied on Mr Holland’s interpretation of the “health” of the bucket and relied on the delegate's comments in CQMS 3 on the meaning of “health” in relation to the parent application.

4. There is no doubt that “health of the bucket” is a very broad concept.  This was recognised by the delegate in the decisions with respect to the parent application.  In CQMS 3, the delegate observed:

   “In [CQMS 1] at paragraph 129 I found:

   ‘The meaning of the words “health” and “performance” (when construed as broadly as is reasonable) includes essentially every measurable characteristic of the bucket.  This aspect of the claim does not lack clarity.’

   In this paragraph of [CQMS 1], I determined that ‘health’ and ‘performance’ includes essentially every measurable characteristic of the bucket.  These are characteristics intrinsic to the bucket.  Intrinsic characteristics would include things such as wear and damage on the bucket, the weight of the (empty) bucket, etc.

   …

   … the determination of fill level of the bucket falls within the scope of the ‘performance of the bucket’, but does not fall within the scope of the ‘health of the bucket’”[43] (emphasis in original)

   [43] CQMS 3 at [8], [9] and [14]

5. To my mind, the same can be said here.  The term “health” clearly relates to the condition of the bucket.  Moreover, in this application, I would also see this as including the condition of elements attached to the bucket, such as wear parts.  This is consistent with Mr Holland’s evidence where he states with respect to the “health of the bucket”:

   “I understand the bucket to include the walls, digging edge, wear parts and the sensor”.[44]

   [44] Holland at [5.9]

   “to monitor”

6. Construction of this term is necessary as there was some debate at the hearing about whether the claim needed to include explicit reference to a “programmable logic device” (as contended by the opponent), or whether such an element was implicit by the fact that the sensor was “to monitor” bucket health.

7. The opponent noted that the description contained numerous references to the use of programmable logic when the system was used to detect certain conditions (e.g. wearing of wear parts).  In their submission, there was no disclosure in the application of how the sensor, such as an optical camera, infrared camera or thermal imaging camera, could, by itself, undertake its task without the use of programmable logic. 

8. The applicant submitted that, in some aspects of the invention, the monitoring system also included the use of programmable logic, which was used in conjunction with the electronic sensors.  The applicant also submitted, when discussing certain claims, that the programmable logic could be part of the sensor itself or a separate monitoring system.  In the applicant’s opinion, properly construed in light of the specification as a whole, and noting the opponent’s references in the description about the use of programmable logic in relation to monitoring, the monitoring of the health of the bucket would necessarily be done by programmable logic, and would not be something which was simply looked at on a screen or the like.  That is, that programmable logic was inherent.  The applicant accepted that the claim was agnostic as to where the programmable logic was, but stated that, since the sensor was said to wirelessly transmit the information, the sensor was doing something more than simply sensing.  In the applicant’s submission, if the sensor contained something which enabled wireless transmitting, then it was equally likely that the electronic sensor could have within it the programmable logic which monitors health.  The applicant maintained that, in such a scenario, it was plainly encapsulated by the claim.

9. I do not agree with the applicant.

10. There is no doubt that programmable logic is not an explicit feature of the claim.  It might be said that the claim encapsulates a sensor that has programmable logic that processes the sensed data into something that could be said to be a determination about the health of the bucket (be it the state of GETs, the load on the bucket, etc).  However, it also has to be said that the claim includes within its scope simply a sensor that wirelessly transmits information and there is no programmable logic beyond that which might be required to read the data from the sensor and present it for transmission, with no determination being made by the logic.  Indeed, as noted by the applicant:

    “The term ‘to monitor’ reflects the purpose of the collection of data by the electronic sensor, that is, that the data is gathered by the electronic sensor and then wirelessly transmitted.”[45]

    [45] Applicant’s written submissions at [7.18]

11. It seems clear to me that claims are defining that the sensor is there as part of a monitoring system, but does not, in and of itself, inevitably include programmable logic that makes some sort of determination with respect to the health of the bucket.  To my mind, the applicant is importing a gloss. 

    Novelty

12. An invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any one of various kinds of prior art information.[46]  It is well established that the general test for anticipation is the reverse infringement test.  The classic formulation of this test is that given by Aickin J in Meyers Taylor v Vicarr Industries:

    “The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement.”[47]

    This test is satisfied if the alleged anticipation discloses all of the essential features of the invention as claimed.[48]  To meet this requirement, the prior art must contain “clear and unmistakable directions to do what the patentee claims to have invented”.[49]  As noted in General Tire:

    “A signpost, however clear, upon the road to the patentee’s invention will not suffice.  The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee”[50]

    [46] The Act, subsection 7(1)

    [47] [1977] HCA 19 at [20]; 137 CLR 228 at [235].

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

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

    [50] See Ibid.

13. The opponent also drew my attention to four points of the principles:

    “First, a relevant disclosure “may often … be implicit” – this requires consideration of whether a claimed feature is “revealed to the person skilled in the art, implicitly, by the disclosure itself, based on that person’s understanding of the disclosure”.  Second, where the prior art discloses some, but not all, of the relevant integers, there will be anticipation “if the skilled addressee would add the missing information as a matter of course”.  Third, anticipation will not be avoided by “parameteritis” – that is, an “an attempt to re-patent the prior art by limiting claims by reference to a series of parameters not mentioned in the prior art” or by "claiming a narrower use of an old product”.  Finally, for the purpose of anticipation, “the prior art merely need[s] to disclose, not teach, the invention”.[51] (italics in original, footnotes omitted)

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

14. In their submissions, the opponent stated that claims 9–14 were not novel in light of WO 2014/049513 (D3).

    WO 2014/049513 – D3

15. D3 is directed to a sensor system which is used to collect information about a worksite machine, such as a bulldozer, to monitor wear and/or damage to, or failure of, components to determine whether repairs and/or replacement of the component is required.  D3 observes[52] that this information can be acquired by a program of inspection and evaluation, but notes that inspection and evaluation of a machine component may result in unnecessary costs and machine down-time when it is determined that service or replacement of the component is not required.  D3 also observes that the inspection or evaluation may require, as part of the process, temporary installation of various sensors throughout the machine, with extensive cabling connecting the sensor to a computer that collects data and other information from the sensors.  D3 notes that the cabling prevents the machine from being operated on the worksite, so evaluation does not provide information relating to the actual use of the machine while performing work.  D3 proposes[53] a sensor system that is mounted on or within a machine component which is installed on the mobile machine.  The sensor system collects information such as, for example, wear, temperature, fluid level, fluid pressure, or load experienced by the machine component while the machine is operating.  This information is transmitted to another part of the sensor system.

    [52] D3 at [0005]

    [53] D3 at [0007]–[0008]

16. Figure 1 shows, schematically, a sensor of the system:

    Sensor system 10 measures information related to one or more of a characteristic of the machine on or within which sensor system 10 is installed, a characteristic of a component of the machine, an operating condition of the machine, an environmental condition experienced by the machine, or any other information.  The sensor system 10 can output the information.  D3 states that the sensor system 10:

    “… may be used with a mobile machine such as a tractor … , a tunnel boring machine … , or any other machine or structure.

    …

    … may be installed on or within ( e.g., embedded within an interior) a component of the machine, such as during manufacture of the machine component, and information from sensor system 10 may be used to determine when the machine component and/or another machine component is to be repaired, serviced, or replaced … or additionally, the information from sensor system 10 also may be used to control operation of the machine.”[54]

    [54] D3 at [0014]

17. Broadly speaking, sensor system 10 includes a sensing component 12 to directly and/or indirectly measure information.  Controller 22 provides an output in response to the input received from sensing component 12 and this output which can be wirelessly broadcast via a transceiver 26 (although the output could be transferred through a cable via a USB port 28).  It is not necessary to expand upon the other elements of the sensor system 10.

18. D3 discusses two embodiments.  The first is where the sensor is installed on a bulldozer.  The second is where the sensor is installed on a tunnel boring machine.  D3 does note that:

    “… sensor system 10 is not limited to use in these specific mobile machines, but instead may be used with other various machines or structures”[55]

    D3 provides specific examples relating the measurement of wear, temperature, fluid level, fluid pressure, and load by the sensor system 10.

    [55] D3 at [0028]

19. When seeking to measure wear, D3 states that:

    “… sensor system 10 may measure wear of a component of a ground engaging tool, such as: a tip, an adapter, an edge, a base edge, a sidecutter, or any other component of a bucket; a tip, a plate, an end bit, or any other component of a compactor; a ripper tip; a cutting edge; a wear bar; a wear plate; and combinations of these or other components.”[56]

    [56] D3 at [0030]

    When seeking to measure fluid level, D3 states that:

    “… sensing component 12 may include an optical sensor that optically detects the level of fluid.”[57]

    Furthermore, when seeking to measure load, D3 states that:

    “… sensor system 10 may measure load on a component of a ground engaging tool, such as: a tip, an adapter, an edge, a base edge, a sidecutter, or any other component of a bucket; a tip, a plate, an end bit, or any other component of a compactor; a ripper tip; a cutting edge; a wear bar; a wear plate; and combinations of these or other components.

    …

    “sensing component 12, may be placed in a location where load is to be measured.  For example, sensing component 12 may be one or more strain gages.”[58]

    [57] D3 at [0036]

    [58] D3 at [0037]–[0038]

20. The process of obtaining measurements is shown at a broad level in Figure 4 of D3:

    Opponent’s submissions

    The opponent provided[59] a table setting out the paragraphs of D3 they submitted disclosed the various features of claim 9.  I have recreated the table below (matching bolding and italics of the original):

    [59] Opponent’s written submissions at [37]

Integer	Claim feature	Exemplary disclosure in D3
9(i)	A bucket for use with excavating equipment comprising	[30]: “sensor system may measure wear of a component of a ground engaging tool, such as: a tip, an adapter, a base edge, a sidecutter, or any other component of a bucket”.  See also: [37].
9(ii)	walls defining a containment portion for gathering earthen material to be excavated,	This is implicitly disclosed.  This is the standard construction of a bucket.
9(iii)	a digging edge,	[30]: “a component of a ground engaging tool, such as: a tip … an edge … any other component of a bucket; a tip … an end bit … a cutting edge”.  See also: [37].
9(iv)	wear parts secured to the digging edge,	As above.  In addition, [30] discloses the measurement of wear of “an adapter” and “any other component of a bucket”.
9(v)	and at least one electronic impact sensor	D3 discloses the use of electronic impact sensors.  For example: [31]: “electric characteristic of sensing component 12” [38]: “sensing component 12 may be one or more strain gages” [40]: “sensor system 10 may collect and process data or other information related to the measured characteristic (e.g., wear, temperature, fluid level, fluid pressure, or load), as experience by the machine component … sensor system 10 may include a particular sensing component 12 configured to receive information related to the particular characteristic to be measured” [42]: “sensor system 10 may measure or determine stress … velocity … acceleration … bolt clamp load”.  Such a system must use sensors which measure “impact”.
9(vi)	secured to one of the walls to monitor the health of the bucket	[14]: “Sensor system 10 may be installed on or within (e.g., embedded within an interior) a component of the machine”.  See also: [31]. [30]: “sensor system may measure wear of a component of a ground engaging tool, such as: a tip, an adapter, a base edge, a sidecutter, or any other component of a bucket”.  See also: [37].
9(vii)	and wirelessly transmit the monitored information.	[17]: “A transceiver 26, such as for example a radio-frequency (RF) transceiver, may wirelessly broadcast the output provided by controller 22”.  Figure 1 discloses that 26 and 22 are components of the sensor system 10, which is installed on a component (such as a bucket) of the machine.

1. Noting that Mr Holland stated in his evidence that he did not agree that D3 disclosed “securing an electronic sensor to the wall of a bucket to monitor the health of the bucket”[60] (i.e. essentially features 9(v) and 9(vi) of the table), the opponent submitted that:

   “(a)the sensor system in D3 is an electronic sensor – it is to receive and output data and has a transceiver 26, output port 28, battery 30 and energy source 32;

   (b)the sensor system in D3 may be “installed” or “located” on the “surface” or “on or within” the component being monitored, which may be a component of a ground engaging tool or bucket; and

   (c)the characteristics to be monitored include wear, load, temperature, fluid level or pressure, or stress, crack initiation, crack propagation or torque, each of which pertain to the “health” of the bucket being monitor.”[61] (italics in original, footnotes omitted)

   [60] Holland at 11.64

   [61] Opponent’s written submissions at [38]

   Applicant’s submissions

2. The applicant submitted that D3 did not disclose the sensor fitted to a bucket’s walls.  Noting the identification of paragraph [0014] of D3 in the table (above), they submitted that:

   “However, this general statement falls well short of an enabling disclosure of a sensor secured to one of the walls of the bucket.  As set out by Dr Hillier:

   “attempting to locate the camera/sensor in this way (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”.

   This is why conventional thought at the Priority Date was that it was not possible to locate a sensor on the bucket.”[62] (italics in original, footnotes omitted)

   [62] Applicant’s written submissions at [8.12]–[8.13]

3. The applicant also submitted that the feature of “wirelessly transmit the monitored information” (feature 9(vii) of the table) was not disclosed at [0017] of D3 as set out in the table.  In their submission, paragraph [0017] of D3 disclosed a transceiver wirelessly broadcasting the output provided by controller 22, but the block-like nature of figure 1 meant that it could not be certain that that the controller (item 22) was in the same enclosure as the sensing component, such that there was a disclosure of the sensing component of D3 (item 12 in figure 1 of D3 shown above) transmitting the data.  As such, there was no clear disclosure of an electronic sensor secured to one of the walls of the bucket, wirelessly transmitting the data it had gathered.

   Consideration

4. The opponent has not made out its case.  At the very least, D3 does not disclose the feature of the sensor being secured to one of the walls of the bucket (i.e. point (b) of the opponent’s submission quoted above).

5. The opponent referred to paragraphs [0014], [0030] and [0031] as the relevant parts of the disclosure of D3.  I note that, relevantly, paragraph [0014] states:

   “Sensor system 10 may be installed on or within (e.g., embedded within an interior) a component of the machine …”,

   paragraph [0030] states:

   “In accordance with the disclosure, sensor system 10 may be used to measure wear … sensor system 10 may measure wear of a component of a ground engaging tool, such as: a tip, an adapter, an edge, a base edge, a sidecutter, or any other component of a bucket …”

   and paragraph [0031] states:

   “When sensor system 10 is used to measure wear, a component of sensor system 10, such as sensing component 12, may be placed in a location where wear is to be measured.  For example, sensing component 12 may be located on a specific portion of a surface of a machine component, so that as the surface of the machine component is worn, sensing component 12 simultaneously experiences a corresponding amount of wear.”

1. While it is true that D3 uses the words “sensor”, “bucket” and “surface” when describing the positioning of the sensor, it is very clear from these paragraphs (and, indeed, from the rest of D3) that there is no disclosure that the sensor is on a wall of the bucket.  I noted during the hearing that paragraph [0030] of D3 says that the sensor was mounted on (or within) a component of a bucket.  I also noted that the examples given in paragraph [0030] were of parts of a GET.  I enquired whether the opponent was stating that “ground engaging tool” and “bucket” were the same.  The opponent indicated that this was their position.

2. I cannot accept this position.  From the context, the “surface” being discussed is the surface of a component of a bucket.  More particularly, the component is one that is replaceable.  Such is not, generally, a characteristic of an excavator bucket.  It cannot be implied that the “component” being discussed in D3 is the bucket.

3. It follows from this that the opponent has not made out its case with respect to claims 9–14.  While claim 12 is an independent claim, it has exactly the same wording as claim 9 with the exception that the word “impact” in claim 9 has been replaced by the word “strain”.

   Inventive Step

4. 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). 

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

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

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

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

1. The test for obviousness was stated by Aickin J in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd[63],and restated by in Aktiebolaget Hassle v Alphapharm Pty Ltd:

   “The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.”[64]

[63] [1981] HCA 12; (1981) 148 CLR 262

[64] [2002] HCA 59; (2002) 212 CLR 411 at [50]

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

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

   An invention may also be obvious in light of the common general knowledge if the person skilled in the art faced with the same problem as the inventor would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not or (using the language of the ‘modified Cripps question’) if the person skilled in the art would be directly led as a matter of course to take such steps in the expectation that doing so might well produce a useful or better alternative to the prior art.  However, a claimed invention is not obvious merely because the person skilled in the art would consider that it was ‘worthwhile to try’.”[65]

   [65] [2020] FCA 1686 at [116]-[117] (citations omitted).

   Problem

2. In their written submissions, the opponent did not put forward what it considered was the problem to be addressed by the invention.  However, noting that the applicant had stated in their written submissions that:

   “… a striking feature of the invention claimed in the Opposed Application is that, notwithstanding the long-standing and well-known problem of ground engaging tools breaking from excavating buckets and causing significant damage and downtime to downstream processing equipment, no one other than the Applicant had apparently thought of the claimed invention.  The reason for that was because the invention was not obvious.”[66],

   the opponent submitted that the problem to be addressed was one of ground engaging tools breaking from excavating buckets and causing significant damage and downtime to downstream processing equipment.

   [66] Applicant’s written submissions at [1.3]

3. The opponent also sought to highlight that assessment of inventive step was performed against the claimed invention and that, even if the description disclosed an inventive solution to a problem or manner of overcoming known difficulties of implementation, this would only be relevant if the relevant features were part of the claimed invention.

4. In addition to the passage quoted above, the applicant also notes:

   “the problem of identifying lost or broken GET was well known before the Priority Date”[67]

   [67] Ibid at [6.7]

5. As mentioned above, the specification notes that there is a need to monitor wear parts (e.g. teeth, shrouds, and lips) commonly provided along the edges of excavating buckets to detect loss or wear of the part(s).  The specification mentions that lost wear parts could cause damage to downstream equipment, and worn wear parts could lead to a decrease in performance of the equipment and excessive wear on other components on the excavating equipment.  Noting the development of systems that use cameras to monitor wear members, the specification indicates that these systems may not immediately register that a wear member has been lost or needs replacement due to obstructions in the field of view (i.e. “blind spots”).  Moreover, the specification notes that systems that might quickly register the loss of a wear part, will not detect whether the wear part needs replacement.  As such, noting that monitoring of wear parts to determine wear or loss, so as to avoid damage and loss of performance was accepted by both parties as known[68], it seems reasonable to conclude that the problem to be addressed is the monitoring of wear parts of an excavator bucket which quickly recognises the need to repair or replace wear parts of an excavator bucket to ensure acceptable production/performance of the excavator equipment.

   [68] See, for example, AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99 at [192] et seq.

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

   (i)        D3

   (ii)       US 2010/0110185 (D4)

   (iii)      JP 62-202131 (D5)

   (iv)      D6

   Common general knowledge

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

   “The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade.  It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge.”[69]

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

8. However, it is not enough that information is recorded in a document, even if that document is widely circulated.  The information is only part of the common general knowledge when it is generally known and accepted:

   “…information does not constitute common general knowledge merely because it might be found, for example, in a journal, even if widely read by persons in the art … Reference in this regard is made to the words of Luxmoore J in British Acoustic Films (1936) 53 RPC 221 at 250, cited by Lehane J in Aktiebolaget Hässle v Alphapharm Pty Ltd (1999) 44 IPR 593; [1999] FCA 628 at 605 [39]:

   In my judgment it is not sufficient to prove common general knowledge that a particular disclosure is made in an article, or series of articles, in a scientific journal, no matter how wide the circulation of that journal may be, in the absence of any evidence that the disclosure is accepted generally by those who are engaged in the art to which the disclosure relates.  A piece of particular knowledge as disclosed in a scientific paper does not become common general knowledge merely because it is widely read, and still less because it is widely circulated.  Such a piece of knowledge only becomes general knowledge when it is generally known and accepted without question by the bulk of those who are engaged in the particular art; in other words, when it becomes part of their common stock of knowledge relating to the art.”[70]

   [70] Ranbaxy Laboratories Limited v AstraZeneca AB [2013] FCA 368; 101 IPR 11 at [217] (italics in original).

9. In their written submissions, the opponent contended that the following were CGK:

   “(a)wear parts were commonly provided along the edges of excavating equipment, to protect the underlying equipment from wear;

   (b)during use, wear parts encountered heavy loading and highly abrasive conditions, which may cause the wear parts to become disengaged or lost.  If this occurred, this had the potential to cause damage to excavating equipment and decrease production;

   (c)further, even if wear parts were not disengaged, they eventually became worn;

   (d)if not replaced at an appropriate time, an excessively worn wear part may be lost, production may decrease, and other components of the excavating equipment may experience unnecessary wear;

   (e)accordingly, it was important to monitor the presence and condition or state of wear parts;

   (f)one way of monitoring the wear or loss of wear parts was ‘by eye’;

   (g)however, there were also a number of systems for monitoring the wear or loss of wear parts in commercial use.  These included:

   (i)vision based systems, in which digital cameras were used to monitor the wear or loss of wear parts, such as the Motion Metrics system (however, it was known that the cameras may be impaired by dust).  The Motion Metrics system worked with a camera looking ‘down on the digging elements of the bucket from above’ and created ‘a lot of false positives’;

   (ii)RFID/radio based systems (however, it was known that this technology had reliability problems and that a local power source was required);

   (iii)systems involving the forming of holes or other features on wear parts, which either became visible, or ceased to be visible, when wear parts reached a certain state of wear (however, it was known that such systems required production to be stopped, in order for personnel to inspect wear parts);

   (iv)the use of ‘sweep gauges’, which could be placed onto or over wear parts, to assess their worn down shape (however, it was known that the use of such gauges required production to be stopped, in order for personnel to inspect wear parts);

   (h)accelerometers could be used to measure and record impact events and strain gauges could be used to monitor machinery fatigue;

   (i)for various types of excavators, an operator’s view of the bucket was often largely obscured by the excavator arm.  This meant that operators could not accurately assess, by eye, the level of fill of the bucket.  Accordingly, from the late 1990s, there had been an increasing drive to automate excavators and other mining machines, including to determine the level of fill in the bucket;

   (j)there were various types of sensors ‘which were commonly mounted on earth working equipment’, including various camera systems (i.e. thermal or vision), accelerometers and rate gyros (contained in inertial measurement units (IMUs)), pressure sensors, strain gauges, thermo-couples and ‘many more’.  Indeed, to the extent that the Application refers to various different types of sensors, including: cameras, laser range finders, ultrasonic sensors, and distance measuring sensors (at [9]), accelerometers and inclinometers (at [13]), and pressure sensors, strain gauges, load cells and GPG (at [51] and [52]), the evidence of Mr Holland is 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’; and

   (k)cameras were ‘generally mounted’ on the ‘major structures’ of excavating equipment to ‘assist with collision avoidance’ and also ‘to address blind spots’.” (footnotes omitted)[71]

   In their written submissions, the applicant took issue with points (f), (g)(iii) and (iv), (h), (i) and (k).

   [71] Opponent’s written submissions at [54]

10. I also note that, in their evidence, the experts provide various extracts from evidence that they have given in respect of other oppositions in respect of the parent application.  In Dr Hillier’s case, he extracts evidence in the opposition to the parent application, which he identifies as his “First ‘221 Declaration”, and his “221 Reply Declaration”.  Mr Clarke and Mr Holland provide extracts from each of their “Earlier 221 Declaration”. 

11. I also note that Dr Hillier refers to his “Third ‘221 Declaration”, which was evidence he filed for the parent application opposition and to his “‘714 Declaration”, which was evidence for the opposition on divisional application 2018201714.  However, it is important to note that, while he refers to these declarations, he provides no extracts from either.  As such, whatever was said in those declarations is not part of the evidence in this opposition.

    (f) monitoring “by eye”

12. As a first point of disagreement, the applicant submitted that point (f), by stating that “by eye” was “one way” to monitor, “severely underplays how often this technique was used at the Priority Date … it was at the relevant time the primary way of monitoring the wear or loss of a wear part”.[72]  They noted that Mr Clarke said:

    “In November 2013, monitoring systems were in their infancy, particular insofar as gaining market acceptance, so the vast majority of monitoring was still ‘by eye’.  Since that time, there has been increasing acceptance of monitoring systems as the technology becomes more advanced and more reliable.  However, even now, the use of monitoring systems is still less common than monitoring ‘by eye’ alone.”[73]

    [72] Applicant’s written submissions at [9.11]

    [73] Clarke at [3.3]

13. Notwithstanding the applicant’s submissions, I do not see a disagreement between the applicant and the opponent here.  The language in the evidence makes it clear that monitoring “by eye” is one way to detect missing/broken GETs.  The point in this paragraph of the opponent’s written submissions goes no further than this.

    (g)(iii) and (iv) systems involving the forming of holes or other features on wear parts the use of “sweep gauges”

14. The applicant stated that the measurement systems of point (g)(iii) and (iv) were not monitoring systems like that of the present invention because they did not involve the use of electronic sensors.  This is correct.  Regardless, this gives support to my conclusion immediately above with respect to “by eye” monitoring that other (non-electronic) ways of monitoring GETs were CGK.

    (h) accelerometers could be used to measure and record impact events

15. The applicant stated that the opponent’s submissions did not state that accelerometers were used for the proposed purposes.  They note that the paragraph of Hillier 1 relied upon by the opponent did not say this. 

16. In one sense, the applicant is correct.  The relevant paragraph of Hillier 1 states:

    “It would be possible (and it would have been possible before November 2013) to create a system for detecting and recording impacts to an excavator bucket by placing (an) accelerometer(s) either directly onto the bucket, and/or on e.g. a link member of the excavator arm near the bucket (the latter might have helped to avoid the accelerometer being damaged or dislodged compared to placement on the bucket), and to use the accelerometer(s) to measure and record impact events.  However, to my knowledge this was (and is) not done as there is no commercial motivation for this.”[74]

    In his evidence, Mr Clarke states:

    “I consider that it would have been highly problematic to do this with the technology available before November 2013.  At the time, there were issues with the reliability of accelerometers, particularly in the harsh environments an accelerometer would be subject to on or near a bucket.  Accelerometers at the time were also quite large.  There were also issues with battery life … and with permanently hard-wiring accelerometers with long cables back to the power source or data logger, as the likelihood of damage to the wires was high.”[75]

    [74] Hillier 1 at [17]

    [75] Clarke at [3.3]

17. This evidence does not establish that the use of accelerometers in monitoring bucket health was CGK.  However, I note that in Holland are the statements:

    “[Minter Ellison] asked me what types of sensors could be used to measure the load resisted by a bucket.  The load resisted could be measured using a load cell, which directly measures the force on the bucket.  It could also be measured indirectly using a strain gauge, a pressure sensor or an accelerometer.”[76]

    “[Minter Ellison] asked me what types of sensors could be used to measure the impact experienced by a wear part.  Accelerometers, load cells and strain gauges are examples of sensors that can be used to measure impact.”[77]

    [76] Holland at [5.15]

    [77] Ibid at [5.25]

18. To my mind, I think it can be said that the evidence establishes that accelerometers and strain gauges are CGK insofar as they are sensors that can measure impacts and load.  As such, if the PSA were to seek to measure strain and/or impact of a piece of equipment, these sensors would immediately come to mind.  However, it cannot be said that mounting accelerometers and strain gauges on excavation buckets is CGK.

    (i) an increasing drive to automate excavators and other mining machines from the late 1990s

19. The applicant submitted that the evidence of Dr Hillier referred to by the opponent went no higher than suggesting that there was a “need for the automated machine to be able to determine the level of fill”[78] (emphasis in original).  The applicant submitted that the evidence did not suggest that it was CGK that this need had been met by existing systems.  In a sense, the applicant is correct, but this does not contradict the opponent’s point. 

    [78] Applicant’s written submissions at [9.14]

20. Dr Hillier’s evidence around this point referred to by the opponent states:

    “Determining fill level in excavator buckets

    26.  There are a number of reasons why the industry has long (since well before 2013) recognized the need to be able to determine the level of fill in an excavator bucket.  For backhoes (and also draglines and other excavating machines in which the digging stroke is inwards towards the machine), it is generally possible for the operator to see the bucket during a digging cycle, so the operator can make a by-eye assessment of the level of fill in the bucket (and know when the bucket is full and should be disengaged from the material being excavated).  However, for other forms of excavators like, e.g. face shovels (in which the digging stroke is outward/upward and away from the machine), the operator's view of the bucket is often largely obscured by the excavator arm, or at least the operator can only see part (usually the back and/or one side) of the bucket.  The operator therefore cannot easily or accurately assess the level of fill in the bucket by eye other than if he or she notices that the excavated material begins to overflow from the side of the bucket that may be visible from the operator cabin.   Also, since the late 1990s and early 2000s there has been an increasing drive to automate excavators and other mining machines, and as part of this there is necessarily a need for the automated machine to be able to determine the level of fill in the bucket so that the machine knows (without human intervention) when to disengage from the material being excavated.”[79]

    I would also note that Mr Clarke states in his evidence:

    “I generally agree with [Dr Hillier’s] comments in paragraph 26.”[80]

    [79] Hillier 1 at [17]

    [80] Clarke at [3.3]

1. The applicant also submitted that the PSA, once seized of the invention, would not choose to work the invention in a way which led to a lack of utility and would add any missing feature to ensure that the claimed invention worked by ensuring that the sensor had appropriate protection and (if required) had a clear line of sight to the wear part.  The applicant noted that both Mr Holland and Dr Hillier had stated the need for the capability to survive the conditions, and neither had any difficulties in envisaging what robust form the sensor might take.  The applicant concluded by stating that:

   “While systems may be envisaged that technically contain the various integers of the claims but which are not suitable for monitoring earth working equipment, these are not systems that the relevant person skilled in the art would adopt (and are in fact not claimed given the limitations in the claims).”[179]

   [179] Ibid at [2.20]

   Opponent’s submissions

2. The opponent noted that:

   (i)paragraph [50] of the application stated that the monitoring system “may monitor the performance of the bucket or other wear members”;

   (ii)the delegate in CQMS 3 had found that “performance of the bucket includes within its scope the health of the bucket”[180]; and

   (iii)Dr Hillier had stated that monitoring something meant “to maintain regular surveillance over that thing”[181] and “[t]he information from the sensor(s) must be used to maintain regular surveillance of the health of the bucket”[182],

   and submitted that, therefore, the promise of the invention was a bucket with a monitoring system enabling regular surveillance over the health of the bucket. 

   [180] CQMS 3 at [11]

   [181] Hillier 1, NH-11 at 1(v)

   [182] See ibid

3. The opponent submitted that, on the evidence, the claims included a sensor secured to a bucket in any configuration without any features to protect the sensor and prevent obscuration.  Accepting that preferred embodiments include features which may do this, the opponent submitted that preferred embodiments could not be used to qualify the invention.

4. The opponent criticised the applicant’s approach of saying that, since the claims used the word “for” when defining the sensor, the claim must be limited to sensors that were suitable for operating while mounted to, and monitoring, a bucket.  They submitted that the word “for” used with respect to the sensor of claim 1 was defining its suitability to produce an image, and the claim did not require the sensor be suitable for monitoring the health of the bucket.  While noting that claims 9 and 12 did not use the word “for” with respect to those sensors, and obscuration prevention was not an issue in those claims, the opponent submitted that the claims did not include features to prevent damage.

5. The opponent noted that Mr Holland had stated in his evidence that:

   “[i]t was not well known to have a design that was sufficiently durable to be secured to the wall of a bucket and operate in the field for a period of time, such as the useful life of a wear part.  At the Priority Date, it was conventional thought that any such sensors when secured to the wall of a bucket would be broken after a short period of time or quickly worn down, and the data lost.”[183]

   The opponent submitted that, therefore, any sensor secured to a bucket without any elements to prevent damage would evidently break down after a short period and would not allow for regular surveillance to occur.  Moreover, a sensor without elements to prevent obscuration would become obscured and not allow for regular surveillance.  As such, as the claims did not require any prevention of obscuration and damage, the claims included within their scope buckets which would attain the promises made.

   [183] Holland at [11.11]

6. With respect to the applicant’s submissions that the PSA would not choose to work the invention in a way that led to inutility, and that no expert had had any difficulties in envisaging what robust form the sensor might take, the opponent noted that it had not run the ground of lack of utility and, thus, it was not surprising that no expert had provided evidence on this point.  Nevertheless, they noted that the applicant’s experts, Messrs Clarke and Holland, had said that it was not straightforward, or might not be achievable, to develop a monitoring system attached to a bucket.  While Dr Hillier had stated that producing a sensor mounted on a bucket would have been a matter of engineering effort rather than ingenuity, the opponent noted that Mr Holland had stated that design engineering work in earth working equipment was not routine and required ingenuity.  Therefore, in the opponent’s opinion, the applicant’s experts could be said to have had difficulty in envisaging what robust form the sensor might take. 

7. As to the applicant’s point that the PSA would add a missing feature, the opponent submitted that court judgements where it was found that the PSA would have done so, it involved the addition of an obvious feature within the CGK that was necessarily imbedded within the claim.  In the opponent’s opinion, a complex configuration of elements ensuring protection in a harsh environment was very different to features within the CGK.  The opponent submitted that the invention was described at such a high level within the application that it was difficult to see the ingenuity that Mr Holland said was necessary to attach a sensor to a bucket and, moreover, if those features were present in the application, they would be expected to be defined in at least a dependent claim. 

8. As to the applicant’s point that there might be inutile systems that technically fall within the scope of the claims, but which would never be adopted by the PSA, the opponent submitted that, while the embodiments of the specification described features that might allow for damage and obscuration prevention, the claims were intentionally broad and not limited to those features.  They submitted that the products within the scope of the claims of the application did not exist at the fringes of the claims.

9. On the question of usefulness, the opponent noted the applicant’s statement that Dr Hillier had never raised any concerns regarding the absence of a specific reference to sensor protection in the claims, and the applicant’s conclusion that Dr Hillier considered the invention would work.  The opponent submitted that the applicant’s reasoning was not logical because the evidence of Dr Hillier relied upon by the applicant had been given after he was asked whether claim 1 excluded any features which were disclosed in the specification.  The question was not about whether the invention would work.  In the opponent’s opinion, because the claims were drafted so broadly, they did not exclude anything, so it was not surprising that Dr Hillier had not raised any concerns.

   Consideration

10. I find the applicant’s submissions unpersuasive.

11. With respect to the promises of the invention, I accept the applicant’s criticism that my letter did not explicitly set out promises of the invention.  However, my letter stated that:

    “[n]otwithstanding the slight difference in the claims of the present application and those of 2018201726, given the identical nature of the descriptions I have the same concerns as the delegate in relation to the present application and claims.”

    The delegate for 2018201726 had noted that:

    “[t]he 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.

    The promises I have listed at [273] above are these same promises (although in a different form).

12. Moreover, as alluded to by the opponent, the promises come from the specification.  Paragraph [08] refers to the invention being “well suited” to monitor the presence and wear profile of the wear parts of buckets.  Paragraph [09] notes that, if a wear part is missing, it triggers an alert so that operator can take action to “ensure that the missing wear part is replaced and that the missing wear part does not damage downstream excavating equipment.”  This is essentially what I have listed above.

13. While the applicant submitted that the claims were directed to a bucket with a sensor and not a bucket with a monitoring system, and that there was no reference in the specification that “regular surveillance” was needed, as I alluded to in my letter, the sensor output (image, impact or strain) was used to “monitor the health of the bucket”.  Moreover, I also reiterate the evidence that I cited at [149] and [246] above where Mr Holland states:

    “[i]t was not well known to have a design that was sufficiently durable to be secured to the wall of a bucket and operate in the field for a period of time, such as the useful life of a wear part.  At the Priority Date, it was conventional thought that any such sensors when secured to the wall of a bucket would be broken after a short period of time or quickly worn down, and the data lost.”[184] (my bolding)

    [184] Ibid at [11.11]

14. Such language from the specification and Mr Holland requires the sensor to be in such a form to ensure such monitoring allowed the health of the bucket to be determined. This necessarily leads to a conclusion that monitoring over an extended period was required. While Mr Holland’s statement starts with such being “not well known”, that simply further emphasises that monitoring was envisaged as occurring over an extended period. From this it follows that, even if it might be said that the second and third promises listed at [273] above might be a result (rather than a promise) which is useful (as per the applicant’s submissions), at the very least the invention is required to meet the first listed promise at [273] above.

15. This same conclusion means that features that ensure such extended monitoring occurred were needed.  This applies to all the claims.  While I accept that the sensor of claim 1 is an image sensor which would require obscuration prevention, and the sensors of claims 9 and 12, being impact and strain sensors, would not require obscuration prevention, consistent with what I noted in my letter, all sensors would still require a form of protection from damage.

16. Turning to Dr Hillier’s non-mentioning of concerns regarding the absence of a specific reference to sensor protection in the claims, the opponent’s submissions are germane.  Dr Hillier had been asked whether claim 1 excluded any features which were disclosed in the specification.  However, with claims that are very broad, it cannot be said that they exclude anything.  While a better question to ask Dr Hillier might have been whether there were features which needed to be present in the claims which were not, this was not the one asked.  As such, this evidence is not determinative in my opinion.

17. With respect to the use of “for” in claim 1, I disagree with the applicant’s submission that the use of the word “for” in claim 1 meant that the sensors were suitable for both producing an image and monitoring the health of the bucket.  The relevant part claim 1 is:

    “at least one electronic sensor for producing an image, and secured to one of the walls to monitor the health of the bucket and wirelessly transmit the monitored information.

    It is clear to me, as the opponent points out, the use of the word “for” here goes only to the issue of the suitability of the sensor to produce an image.  The applicant’s reliance on No Fume, while not incorrect, can only go so far as the claims allow.  Grammatically, the word “for” encompasses nothing else other than the functionality of the sensor.  The operation of the system as a whole in monitoring earth working equipment is not captured.  To put it another way, the claim excludes from its scope any sensors that do not produce an image, but does not exclude sensors that would not be suitable for monitoring in the sense of operating over a period of time, such as the useful life of a wear part.

18. On the point of the PSA not choosing to work the invention in a way which led to a lack of utility and would add any missing feature to ensure that the claimed invention worked, I recognise the words (pointed out by the applicant) of Austal Ships Pty Ltd v Stena Rederi Aktiebolog that:

    “…a claim should not be construed so as to arrive at a ridiculous or concocted result.  A specification should not be construed in a way that any sensible person would appreciate would lead to unworkability when by construction it could be given a more limited meaning …”[185]

    [185] [2005] FCA 805 (“Austal Ships”) at [216]

19. However, it is worthwhile also noting that it was also stated in Austal Ships:

    “It is apparent that in Washex Machinery at 18, Stephen J was of the view that the claim did not need to specify a limitation that was common knowledge in the art for that limitation to apply.  Further, to postulate ‘a quite purposeful adoption’ of a form which would obviously malfunction was ‘not an appropriate mode of testing validity of a patent specification’.”[186] (italics in original, my bolding)

    Along the same lines, it was stated in Britax Childcare Pty Ltd v Infa-Secure Pty Ltd (No 4):

    “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.”[187] (my bolding)

    [186] Ibid at [236]

    [187] [2015] FCA 651 (“Britax”) at [553]

20. As the case law indicates, while it can be the case that a claim will not suffer from a lack of utility if the PSA would supply appropriate features from the CGK to achieve a, or the, promise, the case law does not support finding utility by adding features which are not CGK. 

21. In the present case, I have found that the addition of sensors to buckets was not CGK.  That being the case, it must follow that features relating to the protection of sensors when mounted to buckets also do not form part of the CGK.  Therefore, contrary to the applicant’s position, it does not follow that the PSA would supply missing features to ensure that the claimed invention worked by ensuring that the sensor had appropriate protection and (if required) had a clear line of sight to the wear part.  Such features would not be CGK.  It is clear from the applicant’s evidence that ingenuity is needed to protect the system in the harsh environment, and it is clear from the claims that features exemplifying this ingenuity – such as the different methods for protecting sensors described – are missing.

22. It is not to the point, as submitted by the applicant, having been provided with the application, the PSA might understand that it was possible and be able to make such an invention work.  To my mind, that is an argument about sufficiency.  Having embodiments with protection described, does not mean that those features can be omitted from the claims simply because they show one way of achieving the promise.  As I noted above, the case law establishes that everything that is within the scope of a claim must attain the promise of the invention. 

23. I do not think that this is a case of me making “a finding of lack of utility, when there is no direct expert evidence as to the utility of the invention.”[188]  As I have noted above, the expert evidence referred to by the applicant as indicating them having no utility concerns is not specifically directed to the question.  Moreover, I disagree with the applicant’s contentions that (i) the claim language necessitates only arrangements that are suitable for operation in an earth working environment and (ii) the PSA would ensure that the invention worked across its breadth by adding the necessary features.

    [188] Applicant’s further submissions in reply at [2.20]

24. It follows that independent claims 1, 9 and 12 lack utility.  The dependent claims do not add any features which would ensure that the promise is met.  The invention of claims 1–14 lacks utility.

    Conclusion

25. The opposition is successful. Claims 5, 6, 7, 9, 10, and 12–14 lack support. The claims include arrangements that are not contemplated by the specification. Claims 5, 6, 7, 9, 10, do not comply with section 40(2)(a) as there is no clear enough and complete enough disclosure of the claimed invention. Furthermore, the claimed invention of claims 1–14 is not fully described over the whole scope of the claims and lacks utility.

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

    Costs

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

    Greg Powell

    Delegate of the Commissioner of Patents

    Annex

    1.        A bucket for use with excavating equipment comprising walls defining a containment portion for gathering earthen material to be excavated, a digging edge, wear parts secured to the digging edge, and at least one electronic sensor for producing an image, and secured to one of the walls to monitor the health of the bucket and wirelessly transmit the monitored information.

    2.        The bucket of claim 1 wherein the at least one electronic sensor includes an optical camera.

    3.        The bucket of either of claims 1 or 2 wherein the at least one electronic sensor includes an infrared camera.

    4.        The bucket of any one of the preceding claims wherein the at least one electronic sensor includes a thermal imaging camera.

    5.        The bucket of any one of the preceding claims wherein the at least one electronic sensor monitors the duration of the digging cycles of the earth working equipment and the amount of earthen material gathered in the bucket during each digging cycle.

    6.        The bucket of any one of the preceding claims wherein the at least one electronic sensor detects wearing of the wear parts.

    7.        The bucket of any one of the preceding claims wherein the at least one electronic sensor detects load.

    8.        The bucket of any one of the preceding claims wherein the at least one electronic sensor further monitors the performance of the bucket.

    9.        A bucket for use with excavating equipment comprising walls defining a containment portion for gathering earthen material to be excavated, a digging edge, wear parts secured to the digging edge, and at least one electronic impact sensor secured to one of the walls to monitor the health of the bucket and wirelessly transmit the monitored information.

    10.      The bucket of claim 9 wherein the at least one electronic impact sensor detects high impact events.

    11.      The bucket of either of claims 9 or 10 wherein the at least one electronic impact sensor further monitors the performance of the bucket.

    12.      A bucket for use with excavating equipment comprising walls defining a containment portion for gathering earthen material to be excavated, a digging edge, wear parts secured to the digging edge, and at least one electronic strain sensor secured to one of the walls to monitor the health of the bucket and wirelessly transmit the monitored information.

    13.      The bucket of claim 12 wherein the at least one strain sensor detects applied force in the bucket.

    14.      The bucket of either of claims 12 or 13 wherein the at least one electronic strain sensor further monitors the performance of the bucket.