CQMS Pty Ltd v Hensley Industries, Inc

[2024] APO 36

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

CQMS Pty Ltd v Hensley Industries, Inc. [2024] APO 36

Patent Application:             2020203270

Title:Stabilizing features in a wear member assembly

Patent Applicant:                Hensley Industries, Inc.

Opponent:CQMS Pty Ltd

Delegate:Greg Powell

Decision Date:  21 August 2024

Hearing Date:  5 June 2024 by Video Conference

Catchwords:  PATENTS –opposition to the grant of the patent under s 59 – novelty – claims have novelty – inventive step – oblique bearing surface not common general knowledge – “obvious to try” – claims are inventive – support – claims do not extend beyond the technical contribution – claims supported – clear enough and complete enough disclosure – given the teaching of the specification the claimed invention is well within the skill of the PSA – clear enough and complete enough disclosure –clarity – claims provide a workable standard – claims are clear – opposition unsuccessful – costs awarded

Representation:                   Counsel for the applicant: Kate Beattie

Patent attorney for the applicant: Karl Solanthi of FB Rice Pty Ltd

Counsel for the opponent: Amy Surkis

Patent attorney for the opponent: Adam Luxton of James & Wells Intellectual Property

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application:             2020203270

Title:Stabilizing features in a wear member assembly

Patent Applicant:                Hensley Industries, Inc.

Date of Decision:                21 August 2024

DECISION

The opposition is unsuccessful.  Subject to appeal, I direct that the application proceed to grant.

I award costs according to Schedule 8 against CQMS Pty Ltd.

REASONS FOR DECISION

1. Australian patent application 2020203270 (the application) in the name of Hensley Industries, Inc (the applicant), was filed on 19 May 2020 as a divisional of Australian application 2017264880 (the parent application).  The application ultimately claims a priority date of 13 May 2016.

2. A request for examination was made on 31 July 2020.  The application was accepted on 16 May 2022 and acceptance was advertised on 2 June 2022.

3. A Notice of Opposition was filed on 2 September 2022 by CQMS Pty Ltd (the opponent).  A Statement of Grounds and Particulars (SGP) was filed on 2 December 2022.  Evidence in Support (EIS) was filed on 2 March 2023.  Evidence in Answer (EIA) was filed on 2 June 2023 along with a request under section 104 to amend the specification.  These amendments were allowed on 11 December 2023.  Consequently, all references to the specification in this decision are to the specification as amended.  Evidence in Reply (EIR) was filed on 4 August 2023.

4. The opponent filed a written summary of submissions (the opponent’s written submissions) on 21 May 2024.  The applicant filed their summary of submissions (the applicant’s written submissions) on 29 May 2024.  I have found these documents to be helpful.

   Applicable law

5. 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.

6. 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[1] or, where appropriate, give the applicant a reasonable opportunity to amend the relevant specification to remove any ground of opposition.[2]  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.[3]

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

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

   [3] The Act, subsection 60(3)

   Grounds of opposition

7. 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 of S 40(2) and S 40(3);

   (d)Lack of manner of manufacture; and

   (e)Lack of utility

   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 clarity and support for the claims (S 40(3)); and

   (d)Lack of utility

   The invention as described

   Background

8. The specification notes that the disclosure is:

   “generally directed to ground engaging wear member assemblies including adapters for securing excavating wear members to bucket lips.  More particularly, this disclosure is directed to stabilizing load bearing surfaces between adjacent wear members.”[4]

   [4] Specification at [0002]

9. The specification states that excavating buckets often include excavating tooth assemblies having replaceable wear portions such as ground-engaging teeth (GET).  These GET assemblies are said to typically have a relatively large adapter portion anchored to the forward bucket lip, with this adaptor portion having an adaptor nose which is received into a rear-facing cavity of the replaceable GET when the GET is in position.  The GET is retained on the adaptor by a connector driven into, and retained in, aligned openings in the GET and adaptor nose.  The specification states that, if the GET is not positioned on the nose in a stable manner, the loads experienced by the GET can cause additional wear on the adapter.  Consequently, the specification states that there is a need to have an improved adapter nose and corresponding rear-facing opening in the GET.

   Invention

10. The solution proposed is a wear member assembly with an adaptor nose having a specific shape of bearing (or fit) and non-bearing (or non-fit) surfaces, and a wear member (i.e. a GET) which has a specifically shaped rear-facing cavity, where certain surfaces of the cavity bear against a support structure, which, in the embodiments, is the adaptor nose.

11. In the embodiments, the outer surfaces of the adaptor nose and the corresponding inner walls of the GET cavity form a substantially octagonal shape in transverse cross-section.  Figure 2 provides an example of the nose:

12. Each of the surfaces of the front portion 205, rear portion 207, and intermediate portion 209 of the nose 201 are angled with respect to the longitudinal axis 211, but not necessarily at the same angle.  Moreover, some of the surfaces are angled relative to the transverse axis 215.  The nose carries a concave surface portion 210 which can receive a complementary protrusion formed on the complementary cavity surface of the wear member.  The lower surface of the nose can also have another protrusion 213 (not shown here).

13. Figures 4A and 9 show the octagonal arrangement of surfaces in transverse cross-section of the adaptor nose and the GET, respectively:

14. While some implementations mention that all surfaces can be bearing surfaces, the angled sides of the octagon (204a, 204b, 204c, 204d of the nose and 704a, 704b, 704c, 704d of the GET cavity) are preferred to be the bearing surfaces.  The disposition of the surfaces is such that they provide stabilising contact on more than one fit surface when the earth engaging wear assembly is subjected to a vertical load or a horizontal load. 

    Claims

15. The specification ends with 12 claims, 2 independent claims and 10 dependent claims.  The independent claims are as follows:

    1.A wear member assembly comprising:

    an adapter nose having a longitudinal axis, the adapter nose comprising:

    a forward portion having a plurality of outwardly facing surfaces angled with respect to the longitudinal axis of the nose at a first angle, the outwardly facing surfaces of the forward portion being oblique in cross-section;

    an intermediate portion having a plurality of outwardly facing surfaces angled with respect to the longitudinal axis of the nose at a second angle different than the first angle, the outwardly facing surfaces of the intermediate portion being oblique in cross-section; and

    a rear portion having a plurality of outwardly facing surfaces angled with respect to the longitudinal axis of the nose at a third angle different than the first angle and the second angle, the outwardly facing surfaces of the rear portion being oblique in cross-section;

    wherein a plurality of the surfaces that are oblique in cross-section being shaped and sized as bearing surfaces to bear against a wear member fit over the adapter nose.

    4.A wear member shaped to receive a support structure, comprising:

    a front end and a rear end, the rear end having a cavity formed therein defining a longitudinal axis, the cavity comprising:

    a forward portion having a plurality of inwardly facing surfaces angled with respect to the longitudinal axis at a first angle, the inwardly facing surfaces of the forward portion being oblique in cross-section;

    an intermediate portion having a plurality of inwardly facing surfaces angled with respect to the longitudinal axis at a second angle different than the first angle, the inwardly facing surfaces of the intermediate portion being oblique in cross-section;

    a rear portion having a plurality of inwardly facing surfaces angled with respect to the longitudinal axis at a third angle different than the first angle and the second angle, the inwardly facing surfaces of the rear portion being oblique in cross-section; and

    a plurality of the surfaces oblique in cross-section being shaped and sized as bearing surfaces to bear against a support structure.

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

    Evidence

16. EIS consists of:

    ·A declaration of Dr John DeWit (DeWit 1) dated 1 March 2023, accompanied by exhibits JDW-1 to JDW-12

    EIA consists of: 

    ·A declaration of Anthony Ashworth (Ashworth) dated 2 June 2023, accompanied by exhibits AA-1 to AA-12

    EIR consists of:

    ·A declaration of Dr John DeWit (DeWit 2) dated 4 August 2023, accompanied by exhibit JDW-13

    The person skilled in the art

17. 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.”[5]

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

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

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

    Experts

18. Dr DeWit is the principal engineer of CR Mining Pty Ltd (CR), a related entity of the opponent.  He notes that he has given evidence for the opponent in previous oppositions.  Dr DeWit states that he commenced at CR on 15 June 2012 and his duties at CR were:

    “Carrying out engineering work required to design and engineer CR products, including GET and locking systems for GET.

    Carrying out engineering activities to assist and/or facilitate manufacture of CR products, including GET and locking systems for GET.

    Completing all engineering activities to a high standard and within the agreed timeframe.

    Carrying out engineering work in accordance with best practice and CR, national and international standards.

    Investigating product failures and faults and providing suitable engineering solutions, including such work related to GET and locking solutions for GET.

    Attending sites and manufacturing facilities to provide technical support as required, including such work as it relates to GET and locking solutions for GET.

    Supervising and managing daily activities and workload of engineers within the product development and engineering division of CR.”[7]

    [7] DeWit 1 at [8.1]-[8.7]

19. Dr DeWit comments[8] that he had been employed as a motor mechanic from 1986 to 1996.  He states that he completed a Bachelor of Engineering (Mechanical and Space) in 1997, working as a research engineer at the NASA White Sands Test Facility.  He completed his PhD in 2003, while working on projects as an engineer for Leslie Consulting Pty Ltd where his experience was in GET locking systems for securing GET components together and to the lip of excavator and dragline buckets.  His role included research and development in relation to GET, including design and finite element analysis of GET and locking systems, and field work to analyse problems in mounting and demounting GET and the failure of GET and locking systems.  In 2005 Dr DeWit was the principal engineer and a director of Halico Pty Ltd, providing mechanical engineering consultancy services.  He states that, from March 2012 to 14 June 2012 he was “consulting to CR, providing an independent review of its GET and locking/pinning systems including materials, mechanical properties, manufacturing processes, field performance and design upgrades and modifications.”[9]  He then began his employment at CR.

    [8] Ibid [9]-[14]

    [9] Ibid at [15]

20. Mr Ashworth is a mechanical engineer.  He initially began employment in the area in 1988 as an estimator with Mason & Cox Foundries Pty Ltd (M&C) who manufactured GET products under license from GH Hensley Inc of Dallas Texas (Hensley), and marketed and sold them though a dealer network across Australia.  After completing an Associate Diploma in Mechanical Engineering in 1990 he was appointed technical manager, becoming more focused on the GET product line and undertaking specific technical briefings and experience.  After Hensley withdrew their licence in 1993, Mr Ashworth was appointed design manager of M&C to manage local GET product development and engineering.  After M&C became partly owned by GH Hensley Australia Pty Ltd, a subsidiary of Hensley, in 1996, Mr Ashworth was appointed to Business Development Manager – GET where he took a broader view of the local GET market, monitoring the activities and offerings of competitors, attending trade shows, exhibitions and conferences and having continued responsibility for the local engineering department and product development.  Leaving M&C in 2001, he became, and still is, principal of ASQUARED in which position he states that he has:

    “maintained some involvement in GET as a dealer providing parts to market.  This is on the “will fit” side of the business rather than cutting edge new technologies being offered.”[10]

    Mr Ashworth states that he has worked with GET companies (Bradken, CR Mining (CQMS)) in the manufacture of tooling and gauges for their operations.

    [10] Ashworth at [6.g]

    Opponent’s submissions

21. The opponent submitted that Dr DeWit was well-placed to help in my understanding of the common general knowledge (CGK).  They highlighted his qualifications and his employment in the development, manufacture and investigation of GET and locking systems.  The opponent sought to contrast this with the experience set out in Ashworth.

22. With respect to Mr Ashworth, the opponent particularly noted the very limited information on his experience and expertise in his evidence.  They noted that Mr Ashworth had included details of his experience from 1988 to 2001 but had not set out the nature of his experience.  Noting the passage I have quoted in [20] above, the opponent submitted that this statement indicated that, leading up to the priority date, Mr Ashworth was not directly involved with GET use, design and engineering, but only in the tooling and gauges of the operations of the listed GET companies, not their GET, and this was far removed from the field of the invention.  The opponent submitted that Mr Ashworth’s lack of experience, at the priority date, in the use, design and engineering of GET limited the weight that I could place on it.

23. The opponent submitted that, where there is a conflict between the evidence of Dr DeWit and Mr Ashworth as to the state of CGK or what was known or obvious in the field, the evidence of Dr DeWit should be preferred.

    Applicant’s submission

24. The applicant did not dispute that Dr DeWit was qualified in the relevant field.  The applicant instead noted that Dr DeWit was in full time employment as principal engineer of a related entity of the opponent.  They also noted that Dr DeWit was an inventor on patents in the name of entities associated with the opponent and that he had given evidence in support in oppositions by the opponent (and related entities) many times.  The applicant submitted that, consequently, Dr DeWit was not independent, with this partiality being apparent in many parts of his evidence. 

25. To try and make good on this point, the applicant submitted:

    “For example, Dr DeWit deposes that:

    (a)‘I don’t understand how a surface can be oblique in cross-section.  If you take a cross section through a surface you get a line/edge.  The only surface in a cross-section would be the cut surface.’  Notably, Dr De Wit had no difficulty in interpreting this expression when it came to assessing the prior art and this aspect of his evidence is not referred to in the Opponent’s submissions.

    (b)‘I wouldn’t say that horizontal or vertical faces cannot be “oblique in cross section”’

    (c)‘Claim 1 requires forward, intermediate and rear portions each with surfaces angled at some angle to the longitudinal axis … I interpret claim 1 as allowing one of the portion to be angled parallel to the longitudinal axis.’

    Each of these propositions is farfetched and should be rejected.  They served to demonstrate both Dr DeWit’s unreasonable approach to construing the patent and also the length to which the Opponent must go in order to allege the Application is invalid.”[11]

    The applicant submitted that Dr DeWit evidence was of little assistance and, in critical respects, should not be accepted.

    [11] Applicant’s written submissions at [4.12]-[4.13] (italics and bolding in original, footnotes omitted)

    Consideration

26. It is quite clear that Dr DeWit is a suitable proxy for the PSA.  While, in addition to their submission above, the applicant submitted that his evidence on common general knowledge and inventive step should be rejected for specific additional reasons, that does not detract from the fact that Dr DeWit has extensive experience in the design of GET.  On the other hand, Mr Ashworth’s experience is somewhat unclear.  While he undoubtedly has experience in dealing with GET in the realm of manufacture (under licence), and market monitoring, Mr Ashworth’s experience in design is not as clear.  Mr Ashworth simply states that he was:

    “to manage local GET product development and engineering”,[12]

    while at M&C.  This is not very informative, and I note that his employment at M&C ended in 2001.  Consequently, while I am prepared to take into account the evidence that Mr Ashworth has given, it seems to me that his evidence on GET design has somewhat less weight than that of Dr DeWit.

    [12] Ashworth at [6.e]

27. It follows that, in the very rare circumstance that the opinions of the experts on a GET design point are diametrically opposed, I would prefer the evidence of Dr DeWit over Mr Ashworth.

    Principles of construction

28. 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.”[13]

    [13] [2013] FCA 214; 100 IPR 451 at [139].

29. 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.[14]

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

1. The Full Court in Airco Fasteners Pty Ltd v Illinois Tool Works Inc.[15] 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,[16] and the Court is to place itself in the position of some person acquainted with the surrounding circumstances as to the state of the art and manufacture at the time.[17]  However, it is for the Court, not for any witness however expert, to construe the specification.[18]  A similar approach is taken in matters before the Commissioner.

   [15] [2023] FCAFC 7 at [48].

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

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

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

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

   (i)“bearing surface”;

   (ii)“oblique in cross-section”; and

   (iii)“angled”

   “bearing surface”

3. There was disagreement between the parties as to what bearing surfaces were. 

   Opponent’s submissions

4. The opponent’s position was that a bearing surface was a surface that bears loads.  Relying on both Dr DeWit’s and Mr Ashworth’s evidence, the opponent noted that, in the art, there were what were known as “primary” and “secondary” bearing surfaces.  Primary surfaces were those surfaces that contacted each other initially, such as when a tooth was first put on a nose, and secondary surfaces were surfaces that came into contact with each other after a period of wear.  The opponent noted that the specification stated:

   “Various surfaces of both the front set of surfaces and the rear set of surfaces may be fit (or bearing) surfaces while other surfaces of the front set of surfaces and rear set of surfaces may be non-fit (or non-bearing) surfaces.”[19]

   [19] Specification at [0042]

5. In the opponent’s submissions, there was nothing in the specification that limited “bearing surface” to only those that touched at the initial fit.  The opponent noted that the claims defined these bearing surfaces as being “shaped and sized as bearing surfaces”, and drew on Dr DeWit’s evidence where it was noted that:

   “the term ‘fit surface’ is used to mean a gauged surface (i.e. fitted to a gauge during manufacture).  A fit surface is a surface which has been tightly controlled for a particular reason, including to ensure it makes contact initially (e.g. a primary bearing surface), ensure it is clear of other surfaces initially but then makes contact after some time (e.g. a secondary or tertiary bearing surface) or to ensure it remains clear of other surfaces throughout the life of the GET.”[20]

   [20] DeWit 2 at [54] (italics in original)

6. The opponent submitted that this meant that if a surface was “controlled”, in the sense of being specifically shaped and sized to be a bearing surface, then it was a bearing surface within the scope of the claim. 

   Applicant’s submissions

7. The applicant submitted that the claim was only defining primary bearing surfaces; that is, those that came into contact on the initial fit.  The applicant criticised the opponent’s approach of only highlighting the fact that the claims define the surfaces as being “shaped and sized as bearing surfaces”.  The applicant noted that the claims stated that the surfaces were “shaped and sized as bearing surfaces to bear against a wear member”.  The applicant submitted that these words unambiguously meant the surface was shaped and sized to bear against (i.e. contact), directly and physically, a surface of a wear member.  The applicant referred to Mr Ashworth’s evidence where he stated (italics in original, my bolding):

   “FB Rice asked me: What do you understand by the terms ‘bearing surfaces’, ‘non‐bearing surfaces’ and ‘abutment surface’ generally in the technical field, and specifically in the context of the claims?  My answer is as follows:

   a.Upon assembly with a wear member it has specific surfaces (bearing) which are designed to ‘mate’ (take load).  It has other surfaces (non‐bearing) designed with ‘clearance’ to ensure they do not mate initially and finally there is a surface (abut) that will form a ‘stop’ preventing any further movement”,[21]

   and

   “The bearing and non-bearing surfaces are discussed in the opposed specification at [42]. Bearing surfaces are also described in the specification as fit surfaces, which I understand to mean that they are in contact in the initial fit of the wear member on the adapter nose.  That is, when the wear member is installed on the adapter nose to form the wear member assembly, the bearing surfaces (fit surfaces) of the nose are in contact with corresponding bearing surfaces (fit surfaces) in the pocket of the wear member.

   In contrast, the non-bearing surfaces are described as non-fit surfaces, which I understand to mean that they have a clearance with the wear member and are not initially in contact when the wear member is first fit over the adapter nose.

   After use, the bearing surfaces may wear down or deform.  This may cause some surfaces that are initially non-bearing to come into contact with the wear member and take some loads, but typically a lesser load than the initial or “primary” bearing surfaces.  For example, non-bearing surfaces may include secondary bearing surfaces, or tertiary bearing surfaces, and so on.  But the non-bearing surfaces are designed with an initial clearance so that they are not initially in contact with the wear member in the initial fit.”[22]

   Given this evidence, in the applicant’s opinion bearing surfaces facilitated load transfer between surfaces, and any surfaces that had a clearance (such as the “secondary” bearing surfaces referred to by Dr DeWit) at the time of initial fit could not be said to bear load and would not, therefore, be a bearing surface. 

   [21] Ashworth at [35]

   [22] Ashworth AA-3, 1(ix)

   Consideration

8. The specification uses the terms “fit” and “non-fit”.  The specification also makes clear that a “fit” surface is a bearing surface.  The applicant referred to a number of passages in the specification as follows (bolding and italics in original):

   “(a)[0042]/[0043]: Fit/bearing surfaces and bearing features ‘cooperate to distribute vertical loading in a manner assisting with stability and alignment’ and provide ‘stabilizing contact’.  Only surfaces in physical contact could achieve these objects.

   (b)[0064]: ‘…since not all surfaces are fit surfaces, only the fit surfaces of the cavity and the nose have the same shape.  That is, the cavity may be contoured so that fit surfaces of the cavity match fit surfaces of the adapter.’

   (c)[0065]/ [0066]/ [0067]: ‘The fit surfaces of the adapter may fit with the fit surfaces of the cavity while the non-fit surfaces of the adapter may have slightly different shapes than the non-fit surfaces of the cavity or may be offset from the non-fit surfaces of the cavity…’

   (d)[0068]: ‘The upper inwardly protruding bearing surface portion is sized and shaped to fit with the concave bearing surface portion of the nose…Similarly, the cavity includes a lower inward facing surface that is designed to fit with the downward facing surface of the nose.’

   (e)[0077]: ‘The cavity includes bearing surfaces that correspond with and engage the bearing surfaces of the nose.’

   (f)[0079], [0081], [0083]: ‘…bearing surfaces arranged to contact and interface with surfaces of the tooth…’

   (g)Figures 16A and 16C, in each of which the ‘angled bearing surfaces of the nose fit against the angled bearing surfaces of the tooth’: [0092], [0094].

   (h)[0094]: ‘In the present example, the vertical surfaces of the nose and the vertical surfaces of the tooth are bearing surfaces and thus there is no gap between them.’”[23]

   [23] Applicant’s written submissions at [5.15]

9. I also note paragraph [0094] of the specification (which was the subject of discussion) relevantly states (when discussing figure 16C):

   “In some examples, there may be a gap between the horizontal non-bearing surfaces 1114a, 1114b of the nose and the horizontal non-bearing surfaces 1214a, 1214b of the tooth 1200.  In the present example, the vertical surfaces 1112a, 1112b of the nose 1100 and the vertical surfaces 1212a, 1212b of the tooth 1200 are bearing surfaces and thus there is no gap between them.  In some examples, however, there may be a gap between the vertical surfaces 1112a, 1112b of the nose 1100 and the vertical surfaces 1212a, 1212b of the tooth 1200.”

10. The applicant’s position is that these passages establish that if there is no contact between surfaces at initial fit, they are not bearing surfaces.  However, none of these passages explicitly state that the contact and interfacing occurs at initial fit.  The passages can be interpreted to support both the applicant’s and the opponent’s respective positions.  For example, taking paragraph [0094] of the specification quoted above, it could be said, given the first sentence linking non-bearing surfaces 1114a, 1114b 1214a, 1214b with gaps, to be saying that, if there is a gap, the respective surfaces are non-bearing, with the concomitant outcome that the last sentence is saying that surfaces 1112a, 1112b 1212a, 1212b are non-bearing.  Or, the last sentence could just as easily be taken to be indicating, given the reference to surfaces 1112a, 1112b 1212a, 1212b as “bearing surfaces” in the second sentence and no repudiation of this position in the last sentence, that bearing surfaces can have gaps.

11. In such a situation, it is useful to recall that it was recognised by both experts that, in this art, bearing surfaces take load, and that some surfaces were designed to bear load later than others because they came into direct physical contact at a later point in time due to wear. 

12. I also note that paragraph [0092] of the specification states:

    “In some examples, however, the non-bearing surfaces of both the nose 1100 and the tooth 1200 may make contact when the tooth 1200 is fit over the nose 1100.” (my bolding)

    In this passage, non-bearing surfaces, which are supposed to be spaced apart in the applicant’s opinion, come into contact at the initial fit.  Therefore, gaps are not definitive. 

13. The applicant drew my attention to a statement by the hearing officer in CQMS Pty Ltd v ESCO Corporation; Caterpillar Inc. v ESCO Corporation, where in finding that the expression “stabilizing surface” was clear, he stated:

    “I also find Mr Holland’s evidence on this issue persuasive when he states:

    I would observe that an enormous amount of time and effort goes into the design and development of these products, and into defining the shape of the parts to improve their function.  This includes considering the effect of wear on the system, and also includes controlling and considering the manufacturing tolerances of all parts to ensure they fit together as they are designed to do.  As a practical matter, a skilled person will consider which surfaces are bearing surfaces during the design process, and will be able to identify those surfaces in a practical environment. (Holland at 9.5)”[24]

    [24] [2016] APO 87 at [38]

14. While this passage is not directly applicable here, the principle is apropos.  In my opinion, “bearing surfaces” are surfaces on which time and effort has gone into specifically designing them to bear loads.  This does not mean that the bearing surfaces are limited to only those that contact at the initial fit.  They are limited to those designed to bear loads.  It follows, somewhat contrary to the opponent’s position, that surfaces which may come into contact after the initial fit, but which were not designed to bear loads, are not “bearing surfaces”.

    “oblique in cross-section”

    Opponent’s submissions

15. Notwithstanding the opponent’s view that referring to a surface as being “oblique in cross-section” was unclear because the claims and specification did not define the location or orientation of the cross section, or the reference against which the surface is considered “oblique”, the opponent focussed on whether the edge of the surface appearing in cross-section was to be straight or whether it could be curved.  In their opinion, a curved surface could be considered to be oblique because it has a “general direction” that would be oblique to something else.  The opponent also submitted that Dr DeWit had given evidence that a surface appearing as a curve in cross section would have a number of tangents capable of forming oblique angles.

16. The opponent referred to figure 8 (which is a front view of figure 9 above):

    They noted that surface 704a was considered to be oblique, but also included a curved surface 704e as part of it which had a general direction similar to surface 704a.  The opponent also noted that the Cambridge Dictionary defined oblique as “having a sloping direction, angle, or position”, but did not require an oblique line to be straight, as long as it had a “sloping direction”.

    Applicant’s submissions

17. The applicant described the opponent’s stance that a curved surface could be oblique as “farfetched”.  In their opinion, a curved line had an infinite number of hypothetical tangents and did not define any particular angle.  As such, it was “oblique”.  The applicant submitted that , even if a hypothetical tangent of a curved surface was oblique, it did not mean the surface itself was oblique.  The opined that, if such definition was accepted, then a sphere would be described as “oblique” in cross-section, instead of a single curved surface.  The applicant submitted that, in any event, even if the surface as a whole was planar or not, the requirement was for obliqueness in cross-section. 

18. As to the opponent’s reference to figure 8, they submitted that the curvature 704e was a rounded transition surface, and noted that the specification did not indicate it was part of the oblique surface 704a.  With respect to the Cambridge Dictionary, the applicant, relying on the Macquarie Dictionary, submitted that a “slope” indicated an inclined or slanting direction, not a curve. 

    Consideration

19. I believe that the applicant has the better position.  Notwithstanding the lack of a frame of reference in the claim that might give guidance as to what the cross-section is taken with respect to, I cannot see how a curved surface could be said to be “oblique” in any cross-section.  While tangents could be drawn to the curve that is shown in cross-section, and those tangents could be said to be oblique to an arbitrary horizontal and/or vertical reference, as noted by the applicant, there is literally an infinite number of tangents that could be drawn, but none of those tangents is the surface.  Moreover, noting the opponent’s reliance on the Cambridge Dictionary, I cannot see how a curve has a sloping direction.

20. In my opinion, a surface is “oblique in cross-section” when, in a cross-section that is taken through that surface, the line representing the surface that was intercepted by the cross-sectional plane is angled with respect to lines that are representative of a “horizontal surface” and, at right angles to this, a “vertical surface”.  As to which surfaces are “horizontal” and “vertical”, it seems to me that these are those bearing surfaces that resist a force coming from one direction only.  That is, a horizontal surface resists a vertically applied force, and a vertical surface resists a horizontally applied force.

    “angled”

    Opponent’s submissions

21. The opponent submitted that “angled”, as used in the claims, covered any degree of angling.  That is, with respect to the longitudinal axis, any deviation of a surface from parallel with that axis was an “angled” surface.  The opponent noted paragraph [0082] of the specification stated:

    “In some implementations, each of the eight substantially planar surfaces of the forward portion 1124 converges towards the longitudinal axis 1105 of the nose 1100 but at an angle that is shallower than the angle at which the eight substantially planar surfaces of the rear portion 1122 converge towards the longitudinal axis 1105.  In some examples, the angle of the eight substantially planar surfaces of the forward portion 1124 with respect to the longitudinal axis 1105 may be within a range of about 0-15 degrees.  In some examples, the angle maybe within a range of about 1-8 degrees.”

22. The opponent observed that Mr Ashworth referred to the need to have a draft angle to facilitate casting in his evidence, but submitted that the specification did not state that such an angle was excluded from “angled” in the claim, and it could be any angle above 0⁰. 

    Applicant’s submissions

23. The applicant noted that both experts agreed that it was well known that draft (also known as de minimis) angles were required to facilitate casting of the GET.  The applicant submitted that, given this, it was not surprising that the specification did not mention something that would be incorporated as a matter of course, and the PSA would not consider a surface that was parallel, or as close to parallel as practicable (i.e. possessing only the de minimis draft angle), to be “angled” with respect to the longitudinal axis. 

    Consideration

24. I agree with the applicant. 

25. Both experts stated that a de minimis draft angle would be present.  Mr Ashworth states (when addressing a citation):

    “If the forward portion surfaces are parallel to the X axis, as noted in the text, then in practice, they may not be perfectly parallel to the axis, as they would likely include a small draft angle to facilitate casting.  However, I would not consider this to be angled relative to the longitudinal axis.  I would refer to a surface as parallel to the axis if it was designed to be as close to parallel as possible while maintaining a small draft angle to make manufacturing economically feasible.  It would still be considered substantially parallel to the axis and not angled toward the longitudinal axis”[25],

    and Dr DeWit states:

    “It would be very hard to install and remove the tooth if the contact surfaces are parallel to the longitudinal axis, as well as being very difficult and expensive to achieve on a mass-produced system, so you wouldn’t want to do this.  It was known to me and, in my view, was widely known to others that contact surfaces should be provided with at least a small angle towards the longitudinal axis to facilitate casting and also facilitate assembly and removal of the GET.”[26]

    [25] Ashworth AA-6, 1(vii)

    [26] DeWit 2 at [18]

26. Thus, it seems clear to me that the PSA would not consider a surface that possessed a draft angle to be an “angled” surface, even though the angle that the surface makes with respect to the longitudinal axis may fall within the range described in paragraph [0082] the specification.  That being said, how much a surface might be “angled” above and beyond the draft angle is not constrained by the claim.  As such, I consider an angled surface to be simply one that has more than the de minimis angle expected.

    Novelty

27. 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.[27]  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.”[28]

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

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

1. This test is satisfied if the alleged anticipation discloses all of the essential features of the invention as claimed.[29]  To meet this requirement, the prior art must contain “clear and unmistakable directions to do what the patentee claims to have invented”.[30]  As noted in General Tire v Firestone:

   “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”[31]

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

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

   [31] Ibid.

2. The opponent also drew my attention to three 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”.  Finally, for the purpose of anticipation, “the prior art merely need[s] to disclose, not teach, the invention”.[32] (italics in original, footnotes omitted)

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

3. In their submissions, the opponent stated that claims 1, 3–7 were not novel in light of:

   (i)US 2014/0360062 (D1)

   (ii)WO 2004/057117 (D2)

   (iii)CN 102864813 (D3)

   (iv)US 7980011 (D4)

   The opponent explicitly stated that claims 2 and 8–12 were novel.

   US 2014/0360062 (D1)

4. D1 is directed to a system for mounting on earth working equipment which was composed of an octagonally-shaped (in transverse cross-section) adaptor nose and tooth with a corresponding cavity.  Figure 2 shows the general form:

5. A plan view of Figure 3, as annotated by the opponent, provides further information regarding the nose:

6. D1 notes that there is a problem in that:

   “the manufacturing tolerances require clearances to enable the tooth to be assembled on its support, to which there are added the clearances formed by the pressure hammering and the wear in service of the contact zones, which leaves a possibility of movement of the tooth on its support.  Consequently the horizontal, lateral, oblique or miscellaneous stresses inherent in the applications and uses of a civil engineering machine cause deteriorations in the tooth/nose relationship, but also on the keying device.  Furthermore, the profile of the nose determines the internal profile of the teeth and therefore the presence and magnitude of the localised weakening zones on this tooth.”[33]

   [33] D1 at [0004]

7. To this end, D1 provides a profiled nose and tooth, whereby the changing shape of the nose/tooth, with a relatively large number of flat faces of various inclinations, reduces zones where mechanical stresses are concentrated. 

8. As can be seen from the figures, the nose (and the tooth cavity) has three portions (40, 60, 80) which each have surfaces which would be horizontal in a transverse cross-section (e.g. 41, 61, 81 in figure 3 – the opponent’s red annotations correspond to surfaces on the opposite side of the nose) and surfaces that would be vertical in transverse cross-section (e.g. 43, 63, 83 in figure 3).  The portions also have surfaces which would be oblique in transverse cross-section (e.g. 42, 48, 62, 68, 82, 88 in figure 3).

   Opponent’s submissions – claim 1

9. The opponent provided a table setting out the paragraphs of D1 they submitted disclosed the various features of claim 1.  I have recreated the table below (matching bolding and italics of the original):

Integer	Claim feature	Exemplary disclosure in D1
1(i)	A wear member assembly comprising:	Figure 2 depicts a wear member assembly comprising an adapter nose (30) on which a tooth (10) is mounted.
1(ii)	an adapter nose having a longitudinal axis, the adapter nose comprising:	See figure 3 above.  The adaptor nose is item 30 and the longitudinal access is represented by the line X30 (see also [0040]).
1(iii)	a forward portion having a plurality of outwardly facing surfaces angled with respect to the longitudinal axis of the nose at a first angle,	See figure 3 above.  Zone 80 represents the forward portion.  The outwardly facing surfaces of zone 80 are surfaces 81, 82, 83, 84, 85, 86, 87 and 88.  Each of the surfaces are angled with respect to the longitudinal axis at varying angles.  For example, surfaces 82, 84, 86 and 88 are angled at 5° (see [0048]).
1(iv)	the outwardly facing surfaces of the forward portion being oblique in cross-section;	Figure 8 shows a cross-sectional view of the forward portion of the nose as follows: As illustrated by the annotated red lines, surfaces 82, 84, 86 and 88 are oblique in cross-section with respect to horizontal and vertical directions, with respect to each other and with respect to adjacent surfaces. Notably, the cross-sectional view of forward portion the nose in D1 is very similar to the forward portion of the nose represented in Figure 6 of the Application, see [0020], which is as follows:
1(v)	an intermediate portion having a plurality of outwardly facing surfaces angled with respect to the longitudinal axis of the nose at a second angle different than the first angle,	See figure 3 above.  Zone 60 represents the intermediate portion.  The outwardly facing surfaces of zone 60 are surfaces 61, 62, 63, 64, 65, 66, 67 and 68.  Each of the surfaces are angled with respect to the longitudinal axis at varying angles.  For example, surfaces 62,64,66 and 68 are angled at 20° (see [0046]), being a second angle different from the first angle (5°).
1(vi)	the outwardly facing surfaces of the intermediate portion being oblique in cross-section; and	Figure 7 shows a cross-sectional view of the intermediate portion of the nose as follows: As illustrated by the annotated red lines, surfaces 62, 64, 66 and 68 are oblique in cross-section with respect to horizontal and vertical directions, with respect to each other and with respect to adjacent surfaces.
1(vii)	a rear portion having a plurality of outwardly facing surfaces angled with respect to the longitudinal axis of the nose at a third angle different than the first angle and the second angle,	See figure 3 above.  Zone 40 represents the rear portion.  The outwardly facing surfaces of zone 40 are surfaces 41, 42, 43, 44, 45, 46, 47 and 48.  Each of the surfaces are angled with respect to the longitudinal axis at varying angles.  For example, surfaces 42, 44, 46 and 48 are angled at 13° (see [0045]), being a third angle different from the first angle (5°) and second angle (20°).
1(viii)	the outwardly facing surfaces of the rear portion being oblique in cross-section;	Figure 6 shows a cross-sectional view of the rear portion of the nose as follows: As illustrated by the annotated red lines, surfaces 42, 44, 46 and 48 are oblique in cross-section with respect to horizontal and vertical directions, with respect to each other and with respect to adjacent surfaces.
1(ix)	wherein a plurality of the surfaces that are oblique in cross section being shaped and sized as bearing surfaces to bear against a wear member fit over the adapter nose.	All of the surfaces which are oblique in cross section (82, 84, 86, 88, 62, 64, 66, 68, 42, 44, 46, 48) are shaped and sized as bearing surfaces to bear against a wear member fit over the adapter as they are secondary faces and so bearing surfaces within the scope of claim 1 (see discussion of the Bearing surface issue above). See [0047]: 62, 64, 66, 68 are “secondary faces” and “[B]ecause of a clearance between the nose 30 and the tooth 10 that is greater at the contact interface defined by the secondary faces than at the contact interface defined by the primary faces, the secondary faces are not initially designed to come into abutment against the internal recess of the hollow part 12 of the tooth”. (emphasis added) See [0050]: 42, 44, 46, 48, 82, 84, 86 and 88 are “secondary faces”.

Applicant’s submissions – claim 1

1. The applicant submitted that D1 did not disclose the feature of the surfaces of the nose that were oblique in cross section being bearing surfaces which bore against a wear member that had been fit over the nose.  They noted that D1 stated (with reference to figure 3):

   “it should be noted that the flat faces 61 and 65 have the same inclination with respect to the plane PH and to the axis X30 as the flat faces 41 and 45 that are in line with them in the proximal direction D31.  These faces 61 and 65 are those that have, among all the flat faces of the nose 30, each the largest bearing surface between the nose 30 and the tooth 10.  These faces 61 and 65 may be termed primary faces of the zone 60 and are able to withstand mechanical stresses applied to the nose 30 when the digging force Fc is applied to the tooth 10.  The faces 62, 63, 64, 66, 67 and 68 may be termed secondary faces of the zone 60 since they are not designed to withstand mechanical stresses exerted on the nose 30 under the action of the digging force Fc.  Because of a clearance between the nose 30 and the tooth 10 that is greater at the contact interface defined by the secondary faces than at the contact interface defined by the primary faces, the secondary faces are not initially designed to come into abutment against the internal recess of the hollow part 12 of the tooth 10”[34],

   and:

   “Like the faces 61 and 65, the faces 41, 45, 81 and 85 may be termed primary faces, able to withstand mechanical stresses applied to the nose 30 when the digging force Fc is applied to the tooth 10.  Like the faces 62, 64, 66 and 68, the faces 42, 44, 46, 48, 82, 84, 86 and 88 may be termed secondary faces since they are not designed to withstand mechanical stresses applied to the nose 30 under the action of the digging force Fc.  On the other hand, unlike the faces 63 and 67, the faces 43,47, 83 and 87 are designed to withstand mechanical stresses exerted on the nose 30 when a lateral force is applied to the tooth 10.”[35]

   [34] D1 at [0047] (bolding in original)

   [35] D1 at [0050] (bolding in original)

2. The applicant submitted that, contrary to the claimed invention, the surfaces that were oblique in cross-section in D1 (being surfaces labelled 42, 44, 46, 48, 62, 64, 66, 68, 82, 84, 86, and 88) were not bearing surfaces as they had not been designed to withstand mechanical stresses and had a clearance between the nose and the tooth.  However, even accepting that these secondary surfaces could be considered bearing surfaces, the applicant submitted that there was no disclosure of them operating as bearing surfaces in D1.  They noted that the opponent had relied upon Dr DeWit’s evidence where he had stated:

   “I don’t see any reason why the surfaces 42, 44, 46, 48, 62, 64, 66, 68, 82, 84, 86 and 88 would not be expected to become bearing surfaces after a period of time and therefore they would have tolerances defined that would accommodate their use as bearing surfaces”[36],

   which was a conclusion about something that could, but not necessarily would, come about. 

   [36] DeWit 1, JDW-4 1(ix)

   Consideration

3. I agree with the applicant.

4. While, as the opponent noted, D1 stated that the oblique surfaces were “secondary” surfaces, D1 does not label them as secondary bearing surfaces.  Indeed, D1 explicitly says that the oblique surfaces have not been designed to withstand mechanical stresses.  Given my construction of “bearing surface” above, D1 cannot be said to disclose bearing surfaces which are oblique in cross-section.  Claim 1 does not lack novelty in light of D1.

   Claims 2–12

5. It follows from this finding that the remaining claims also do not lack novelty in light of D1.

   WO 2004/057117 (D2)

6. D2 is directed to a system having an adaptor nose to detachably mount a tooth. 

7. D2 notes that, in similar prior art arrangements, the system is often configured to absorb loads which are essentially parallel to the longitudinal axis of the system (axial direction “Y” of the above figure).  However, loads that are experienced by the system in use are not always in the axial direction Y, but can also include or comprise loads transverse to the longitudinal axis (axial directions “X” and “Z” of figure 1 below).  These loads result in torque loads which have to be absorbed via double contact zones leading to excessive wear of the nose, resulting in the need to replace the nose sooner than should be necessary.  D2 seeks to address this problem by designing a system where wear between the contact faces of the nose and the tooth only occurs at predetermined, and specially purpose-made, surfaces.

8. Figure 1 shows the overall system:

   Opponent’s submissions – claim 1

9. The opponent provided a table setting out the paragraphs of D2 they submitted disclosed the various features of claim 1.  I have recreated the table below (matching bolding and italics of the original):

Integer	Claim feature	Exemplary disclosure in D2
1(i)	A wear member assembly comprising:	Figure 1 depicts a wear member assembly on which a “front wearing part” (2) (a tooth) is attached to a “rear stationary holder” (3) with a beak (8) (an adaptor nose) (see page 27 line 32–page 28 line 21).
1(ii)	an adapter nose having a longitudinal axis, the adapter nose comprising:	See figure 1 above.  The line labelled Y is the longitudinal axis of the adapter nose.
1(iii)	a forward portion having a plurality of outwardly facing surfaces angled with respect to the longitudinal axis of the nose at a first angle,	See figure 1 above.  The adaptor nose has a forward portion with faces (10) which are outwardly facing surfaces.  These surfaces are best seen in figure 2 as follows: The green line in Dr DeWit’s annotated version of figure 12 shows that the outwardly facing surfaces of the forward portion of the adaptor nose are angled with respect to the longitudinal axis (y) at a first angle.
1(iv)	the outwardly facing surfaces of the forward portion being oblique in cross-section;	Figure 15c shows a cross-sectional view of the forward portion of the nose as follows: As illustrated by the annotated red lines, the corners are oblique in cross-section.
1(v)	an intermediate portion having a plurality of outwardly facing surfaces angled with respect to the longitudinal axis of the nose at a second angle different than the first angle,	See figure 1 above.  The adaptor nose has an intermediate portion with faces (10) and (11) which are outwardly facing surfaces.  These surfaces are best seen in figure 2 as follows: The blue line in Dr DeWit’s annotated version of figure 12 shows that the outwardly facing surfaces of the intermediate portion of the adaptor nose are angled with respect to the longitudinal axis (y) at a second angle which is different to the first angle (indicated by the green line).
1(vi)	the outwardly facing surfaces of the intermediate portion being oblique in cross-section; and	Figure 15b shows a cross-sectional view of the forward portion of the nose as follows: As illustrated by the annotated red lines, the corners are oblique in cross-section.
1(vii)	a rear portion having a plurality of outwardly facing surfaces angled with respect to the longitudinal axis of the nose at a third angle different than the first angle and the second angle,	See figure 1 above.  The adaptor nose has a rear portion with faces which are outwardly facing surfaces.  These surfaces are best seen in figure 2 as follows: The red line in Dr DeWit’s annotated version of figure 12 shows that the outwardly facing surfaces of the rear portion of the adaptor nose are angled with respect to the longitudinal axis (y) at a third angle which is different to the first angle (indicated by the green line) and second angle (indicated by the blue line).
1(viii)	the outwardly facing surfaces of the rear portion being oblique in cross-section;	Figure 15a shows a cross-sectional view of the rear portion of the nose as follows: As illustrated by the annotated red lines, the corners are oblique in cross-section.
1(ix)	wherein a plurality of the surfaces that are oblique in cross section being shaped and sized as bearing surfaces to bear against a wear member fit over the adapter nose.	Dr DeWit’s evidence is that the rounded corners which are, as noted above, oblique in cross section are bearing surfaces as they will either bear or will come to bear against one another.

Applicant’s submissions – claim 1

1. The applicant submitted (in their written submissions) that D2 did not disclose:

   (i)the surfaces of the forward portion being angled with respect to the longitudinal axis – the applicant submitted that the surfaces of the forward portion were parallel to the longitudinal axis rather than angled as the lines added by the opponent in their submissions appeared to suggest;

   (ii)the forward portion having surfaces that are oblique in cross-section – the applicant submitted that rounded corners could not be considered oblique surfaces;

   (iii)an intermediate portion that has surfaces that are oblique in cross-section – the applicant submitted that there was doubt that there was an intermediate portion, but, to the extent that surface 11 of the figures was considered intermediate, they were curved surfaces that could not be considered to be oblique;

   (iv)the surface of the rear portion being angled with respect to the longitudinal axis at an angle different to the angle of the forward portion – the applicant submitted that the angle of the rear portion is not clearly at a different angle to the angle of the other surfaces, and the lines drawn on figure 12 (see the opponent’s table above) were not clearly and unmistakeably disclosed in D2 as figure 12 was not clear enough to measure any angle;

   (v)the rear portion having surfaces that are oblique in cross-section – the applicant submitted that the surfaces of the rear portion were curved and could not be considered to be oblique; and

   (vi)the surfaces that are oblique in cross-section being bearing surfaces – the applicant submitted that, given the curved surfaces, there were not obliques surfaces that would be bearing surfaces.

   At the hearing, the applicant stated that the two main reasons D2 could be dismissed immediately were (i) and (ii)

   Consideration – claim 1

2. As noted by the applicant at the hearing, the opponent’s case on D2 cannot succeed because, at the very least, of reasons (i), (ii) and (vi) they set forth.

3. For (i), as is clear from the figures set out in the opponent’s written submissions, there is no disclosure of forward portion having surfaces that are oblique in cross-section.  As I have found above, a curved surface could not be said to be “oblique” in any cross-section.  As at least the forward portion only has rounded corners, it has no oblique surface.  It follows that the forward portion at least does not have any bearing surfaces that are oblique in cross section.

4. Furthermore, with respect to (ii), despite the lines drawn by the opponent on various figures of D2, it cannot be said that that there are clear and unmistakeable directions to angle the surfaces of the forward portion.  Figure 12 without lines is:

5. It is not clear to me what cues in the drawings the opponent used to place the lines where they did.  The lines identifying the forward inner face of the tooth cavity and the forward outer surface of the nose come together to form a single line in the figure.  In such a circumstance, given the greater thickness of this line, there are any number of lines that could be drawn at different angles that would be wholly contained within this thick line.  To my mind, the strong impression I get from figure 12 is that the forward portion of the nose (see 9 of the figure) is parallel to the longitudinal axis.  Claim 1 does not lack novelty in light of D2.

   Claims 2–12

1. It follows from this finding that the remaining claims also do not lack novelty in light of D2.

   CN 102864813 (D3)

2. D3 is directed to a system having an adaptor nose to detachably mount a tooth.  As it is a Chinese language document, the opponent provided a machine translation, while Mr Ashworth’s evidence included a translation created by a professional translation service.  I do not believe that anything turns on the slight differences that exist between the two texts.  However, if there are differences that could be key, I would prefer the translation by the professional service.

3. D3 notes that the working environment of a bucket is very harsh and the bucket’s tooth assembly is required to endure large, directionally-variable forces and must remain reliably fixed onto its nose.  Given the complicated forces involved, D3 states that the attachment interface between the bucket tooth and the nose is very important and is a key point at which the designers in the industry of excavators make innovations with a goal of providing a high stability, strong attachment which is easy to assemble and disassemble.

4. D3 addresses this with an assembly comprised of a tooth and a nose with a configured set of surfaces.  Figure 1 is representative of the invention.  The opponent provided an annotated example in their written submissions:

   Opponent’s submissions – claim 1

5. The opponent provided a table setting out the paragraphs of D3 they submitted disclosed the various features of claim 1.  I have recreated the table below (matching bolding and italics of the original):

Integer	Claim feature	Exemplary disclosure in D3
1(i)	A wear member assembly comprising:	Figure 1 depicts a wear member assembly on which a “bucket tooth” (2) (a tooth) is attached to a “tooth head” (10) (an adaptor nose).
1(ii)	an adapter nose having a longitudinal axis, the adapter nose comprising:	The axis indicated as “x” in figure 1 is the longitudinal axis of the adaptor nose.
1(iii)	a forward portion having a plurality of outwardly facing surfaces angled with respect to the longitudinal axis of the nose at a first angle,	See figure 1 above.  The adaptor nose has a forward portion with surfaces which are outwardly facing surfaces.  These surfaces are best seen in figure 2 as follows: Dr DeWit’s evidence is that surfaces of the forward portion would have to have at least a small angle with respect to the longitudinal axis X to allow easy assembly and disassembly and for manufacturing reasons.  The blue line in Dr DeWit’s annotated version of figure 8 (below) represents the relevant surface which Dr DeWit considers must have at least a small angle.
1(iv)	the outwardly facing surfaces of the forward portion being oblique in cross-section;	Figure 11 (being a cross section taken at line DD of figure 8 – see D3A at [0037]) shows that surfaces 31, 33, 61, and 63 are all oblique in cross section as follows:
1(v)	an intermediate portion having a plurality of outwardly facing surfaces angled with respect to the longitudinal axis of the nose at a second angle different than the first angle,	See figure 1 above.  The adaptor nose has an intermediate portion with surfaces which are outwardly facing surfaces.  These surfaces are best seen in figure 2 as follows: Dr DeWit’s evidence is that surfaces of the intermediate portion, as shown in the green line in Dr DeWit’s annotated version of figure 8 (below) are angled with respect to the longitudinal axis (x) at a second angle which is different to the first angle (indicated in blue).
1(vi)	the outwardly facing surfaces of the intermediate portion being oblique in cross-section; and	Dr DeWit’s evidence is that surfaces 21, 22, 23, 24 (see figure 2) and the corresponding underside surfaces, 51, 52, 53 and 54 (see figure 3) would appear as oblique in cross-section.
1(vii)	a rear portion having a plurality of outwardly facing surfaces angled with respect to the longitudinal axis of the nose at a third angle different than the first angle and the second angle,	See figure 1 above.  The adaptor nose has a rear portion with surfaces which are outwardly facing surfaces.  These surfaces are best seen in figure 2 as follows: Dr DeWit’s evidence is that surfaces of the rear portion, as shown in the red line in Dr DeWit’s annotated version of figure 8 (below) are angled with respect to the longitudinal axis (x) at a third angle which is different to the first angle (indicated in blue) and second angle (indicated in green).
1(viii)	the outwardly facing surfaces of the rear portion being oblique in cross-section;	Figure 10 (being a cross section taken at line AA of figure 8 – see D3A at [0036]) shows that surfaces 11, 13, 41, and 43 are all oblique in cross section as follows:
1(ix)	wherein a plurality of the surfaces that are oblique in cross section being shaped and sized as bearing surfaces to bear against a wear member fit over the adapter nose.	D3A Paragraph [0045] states that the rear portion and forward portion surfaces which are oblique in cross section (being 11, 13, 41, 43, 31, 33, 61, and 63) are each “cooperation faces” which contact corresponding “cooperation faces” of the tooth chamber (being 11’, 13’, 41’, 43’, 31’, 33’, 61’, and 63’).  Dr DeWit interprets these cooperation faces as bearing surfaces.

Applicant’s submissions – claim 1

1. The applicant submitted (in their written submissions) that D3 did not disclose:

   (i)the surfaces of the forward portion being angled with respect to the longitudinal axis; and

   (ii)the surface of the rear portion being angled with respect to the longitudinal axis at an angle different to the angle of the forward portion.

2. With respect to (i), the applicant noted figures 8 and 9:

   and referred to paragraph [41] of the professional translation, which stated:

   “… the stress endured during a bucket operation is shown in Figure 8 (analyzing the stress endured by the bucket tooth 2); the shaded portion in the figure indicates a bucket lip plate of the excavator.  The external force applied on the bucket tooth 2 is F1 (which is a simplified force); in this case, the fitting surfaces 32 and 42 support the bucket tooth 2, generating a force F2 on the fitting surface 32' and a force F3 on the fitting surface 42', and a relationship of F2 = F1 + F3 is established.  The fitting surfaces 32, 32’, 42, and 42’ are parallel to the X-axis, and the forces F2 and F3 are perpendicular to the fitting surfaces 32, 32’, 42, and 42’, no component force along the X-axis direction (namely, the force separating the bucket teeth 2 and the tooth base 1) is generated; this eliminates the possibility of the pin 3 being sheared and broken or severely worn under the action of the shear force, thereby ensuring the stability of the entire assembly.  Since the fitting surfaces of the bucket tooth 1 and the tooth base 2 are symmetrically arranged along the X-axis, when the direction of a force applied on the bucket tooth 2 is opposite to the F1 direction, the above-mentioned force relationship is also established.  A fitting surface of a conventional bucket tooth forms a certain angle with the X-axis, as shown in Figure 9; when the bucket tooth is subjected to the external force F1, F3 is broken down into component forces F4 and F5 that are perpendicular to each other; the component force F4 is parallel to the X-axis, and the component force F4 will all be transferred to the pin, possibly shearing the pin.” (my emphasis)

   I note that the opponent’s machine translation is not materially different (even though it is more clumsily worded).

3. The applicant submitted that the feature that the forward surfaces were parallel (as shown in figure 8) was an important feature of D3, and this was highlighted by the fact that D3 distinguished this arrangement to the “conventional”, angled arrangement of figure 9.  Moreover, noting that Dr DeWit had stated that the surfaces would have had:

   “a small angle with respect to the longitudinal axis X to allow easy assembly and disassembly and possibly also for manufacturability reasons, e.g., a small draft angle for casting”[37],

   the applicant submitted that draft angles do not encompass the angled surfaces required by the claims.

   [37] DeWit 1, JDW-6, 1(iii)

4. With respect to (ii), the applicant again noted the reference in paragraph [41] of the translation to these surfaces being parallel to the longitudinal axis.  They also criticised the opponent’s lines they added to the figures.  They also submitted that, assuming there was an angle to the surfaces of the forward and rear positions, there was no disclosure that these angles were different to each other.

   Consideration – claim 1

5. I agree with the applicant.  The surfaces of the forward portion are not angled with respect to the longitudinal axis.

6. To the extent that it might be said that the rear portion shown in figure 8 is angled with respect to the longitudinal axis, the word used in D3 to describe them is “parallel”.  While I accept that the use of “parallel” is not, by itself, determinative of the disclosure, and figure 8 might be used to establish angled surfaces at the rear portion, as pointed out by the applicant D3 is at pains to highlight the difference between its invention and that of a conventional tooth and nose arrangement that had surfaces that were angled with respect to the longitudinal axis.  Clearly, D3 is saying that the forward and rear surfaces are parallel to the longitudinal axis.  In any event, the same observation that I made in my discussion of D2 about the lines added by the opponent can be made here.  Claim 1 does not lack novelty in light of D3.

   Claims 2–12

7. It follows from this finding that the remaining claims also do not lack novelty in light of D3.

   US 7980011 (D4)

8. D4 is directed to a system having an adaptor nose to detachably mount a tooth.  D4 notes that excavators are commonly provided with one or more teeth releasably secured with pins, wedges, etc to noses on adaptors positioned on lips of the implements.  D4 states that insecure attachment of the tooth to the nose can lead to excessive wear between a tooth and an adaptor nose, and vice versa at interfaces of the teeth and noses.  D4 notes that a fully stabilized excavator tooth and/or provision of an improved attachment system is required

9. D4 addresses this with an assembly comprised of a tooth and a nose with a configured set of surfaces.  Figure 3 is one representation of the invention.  The opponent provided an annotated example in their written submissions:

   Opponent’s submissions – claim 1

10. The opponent provided a table setting out the paragraphs of D4 they submitted disclosed the various features of claim 1.  I have recreated the table below (matching bolding and italics of the original):

Integer	Claim feature	Exemplary disclosure in D4
1(i)	A wear member assembly comprising:	Figure 3 depicts an attachment system on which a “tooth” (18) is attached to an “adaptor nose” (22).
1(ii)	an adapter nose having a longitudinal axis, the adapter nose comprising:	Figure 3 shows the longitudinal axis of the adaptor nose as item 40.
1(iii)	a forward portion having a plurality of outwardly facing surfaces angled with respect to the longitudinal axis of the nose at a first angle,	See figure 3 above.  The adaptor nose has a forward portion with surfaces which are outwardly facing surfaces. Dr DeWit’s evidence is that surfaces of the forward portion are angled with respect to the longitudinal axis at a first angle.
1(iv)	the outwardly facing surfaces of the forward portion being oblique in cross-section;	Figure 6 (being a cross section taken at line 6-6 of figure 3 – see col 2 line 58-59) shows that surfaces 60 and 62 are all oblique in cross section as follows: While Figure 6 is from the intermediate portion, Dr DeWit’s evidence is that based on figures 2, 3 and 7 to 10, he is able to observe that these surfaces would also be oblique in cross-section in the forward portion.
1(v)	an intermediate portion having a plurality of outwardly facing surfaces angled with respect to the longitudinal axis of the nose at a second angle different than the first angle,	See figure 3 above.  The adaptor nose has an intermediate portion with surfaces which are outwardly facing surfaces. Dr DeWit’s evidence is that figure 5 shows that surfaces of the intermediate portion, are at a different (steeper) angle with respect to the longitudinal axis than the angles of the forward portion, and so are angled at a second angle.
1(vi)	the outwardly facing surfaces of the intermediate portion being oblique in cross-section; and	Per integer 1(iv) above, figure 6 shows that surfaces 60 and 62 are all oblique in cross section.  Surfaces 54 and 56 are also oblique in cross section.
1(vii)	a rear portion having a plurality of outwardly facing surfaces angled with respect to the longitudinal axis of the nose at a third angle different than the first angle and the second angle,	See figure 3 above.  The adaptor nose has a rear portion with surfaces which are outwardly facing surfaces. Dr DeWit’s evidence is that surfaces of the rear portion could be angled with respect to the longitudinal axis at a third angle different from the first and second angle.
1(viii)	the outwardly facing surfaces of the rear portion being oblique in cross-section;	Per integer 1(iv) above, figure 6 shows that surfaces 60 and 62 are all oblique in cross section.
1(ix)	wherein a plurality of the surfaces that are oblique in cross section being shaped and sized as bearing surfaces to bear against a wear member fit over the adapter nose.	Each of the oblique surfaces are “interface surfaces” (see col 5 line 11-13).

Applicant’s submissions – claim 1

1. The applicant submitted (in their written submissions) that D4 did not disclose:

   (i)the surface of the rear portion being angled with respect to the longitudinal axis at an angle different to the angle of the forward portion; and

   (ii)the rear portion having surfaces that were oblique in cross-section.

2. The applicant referred to figure 10 of D4 (which essentially shows the nose portion presented in broken lines in figure 3):

   The applicant noted that the rear portion on the nose of figure 10 had surfaces 60, 62, 72 and 74.  With respect to (i), the applicant submitted that D4 stated that surfaces 72 and 74 were parallel to the longitudinal axis and referred to column 5 line 55 in this regard.

3. With respect to (ii), they noted that the opponent had identified surfaces 60 and 62 as the oblique surfaces.  The applicant submitted that figure 10 clearly showed that surfaces 60 and 62 were each a continuous surface that extended throughout the forward, rear and intermediate portions of the nose at a constant angle in a single plane.  The applicant submitted that, as such, (ii) could not be present as the oblique surfaces in each portion were not angled with respect to the longitudinal axis at different angles. 

   Consideration – claim 1

4. The applicant is correct in its submission (with respect to (ii)) that the oblique surfaces in each portion of the nose are not angled with respect to the longitudinal axis at different angles.  As is clear from figure 6 included in the opponent’s table, surfaces 60 and 62 are contiguous, with no variation in their plane.

5. I will in mention passing that I do not believe that the passage quoted by the applicant to support a conclusion that surfaces 72 and 74 were parallel to the longitudinal axis stands for what the applicant asserted.  The sentence highlighted by the opponent at column 5 line 55 of D4 is:

   “The surfaces 72, 74 could be parallel to the longitudinal axis 40, if desired.”

   This sentence appears at the end of two paragraphs which state:

   “The surfaces 72, 74 are preferably longitudinally spaced apart from each other along each of the upper and lower walls 34, 36, and are preferably parallel to each other.  The surfaces 72, 74 are also preferably offset relative to each other in a direction perpendicular to the surfaces.  The surfaces 72, 74 could be somewhat inclined relative to each other, if desired, but preferably such relative inclination is minimal.

   The surfaces 72, 74 are preferably inclined somewhat relative to the longitudinal axis 40 and the orthogonal axis 44, but are parallel to the lateral axis 42.  The surfaces 72, 74 could be parallel to the longitudinal axis 40, if desired.”[38]

   [38] D4, column 5 lines 46–56

6. Figure 10 has two surfaces labelled “72” and two labelled “74”.  In D4, “72” refers to the top surface of the forward portion and the bottom surface of the rear portion.   Equally, “74” is used to refer both to the top surface of the rear portion and the bottom surface of the forward portion.  To my mind, this passage is stating that surfaces 72 and 74 in the rear portion could be inclined relative to the surfaces 72 and 74 in the forward portion.  It is also saying that the surfaces could be inclined relative to the longitudinal axis, or could be parallel to it.  Unlike D3, D4 clearly contemplates a non-parallel arrangement.  Nevertheless, D4 does not deprive claim 1 of novelty as discussed above.

   Claims 2–12

7. It follows from this finding that the remaining claims also do not lack novelty in light of D3.

   Inventive Step

8. 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.

The test for obviousness was stated by Aickin J in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd[39],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.”[40]

[39] [1981] HCA 12; (1981) 148 CLR 262

[40] [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’.”[41]

   [41] [2020] FCA 1686 at [116]-[117] (citations omitted).

   Problem

1. For completeness, noting that I stated at [78] that D2 does not disclose surfaces of the forward portion being angled with respect to the longitudinal axis, even accepting that surfaces angled with respect to the longitudinal axis was CGK in the art, it does not follow that the PSA would, as a matter of routine, arrange the angling of the forward portion surfaces in the manner that is claimed.  The opponent’s submission that such an arrangement constitutes an arbitrary selection of surfaces with particular planes (and bearing capacities) is putting the cart before the horse.  This approach impermissibly starts with the conclusion and asks whether it was obvious to proceed from the prior art to the claim. 

   Lack of inventive step in light of D3

2. I noted at [89] above that D3 did not disclose the surfaces of the forward and rear portions being angled with respect to the longitudinal axis and being angled differently with respect to each other (and the intermediate portion). I also noted at [113] above that it could be said that it was known for the nose and the tooth cavity to have surfaces at various angles (when considered in transverse cross-section) and that surfaces can be angled with respect to the longitudinal axis.

3. However, as I have noted above, it is not enough to have individual features be part of the CGK.  It is also a requirement that the PSA be directly led as a matter of course to try the invention.  I do not consider that the opponent has put forward a convincing argument that this would be the case.  They have simply stated:

   “Further, to the extent that … any of the rear, intermediate or forward portions in D3 are not considered to be angled with respect to the longitudinal axis or at a different angle to one another, it would be a routine matter to modify D3 to create such angles.  It was known that such angles were necessary to facilitate casting and that there were different taper angles relative to the longitudinal axis and so the skilled person would have been motivated to make such a modification to D3.”[53]

   [53] Opponent’s written submissions at [147]

4. It is true that the PSA could design a nose or tooth with rear, intermediate and forward surfaces, and the PSA could design the nose or tooth such that these surfaces had different angles with respect to the longitudinal axis, but that is not the test.  The opponent seems to be advocating for the PSA to “vary all parameters or try each of numerous possible choices” (as per Judge Rich in In re O'Farrell, quoted at [126] above).  In my opinion, this a pure “obvious to try” submission.  The opponent has not established that claims do not lack inventive step in light of D3.

   Lack of inventive step in light of D4

5. In a similar way, the opponent has not convinced me that the claims lack an inventive step in light of D4.

6. As I noted above, D4 does not disclose the oblique surfaces in each portion of the nose being angled with respect to the longitudinal axis at different angles. The opponent made the same argument quoted at [132] above as to why D4 anticipates the claims. As I set out for D3, while it might be said that the PSA could design a tooth with rear, intermediate and forward surfaces at different angles with respect to the longitudinal axis, the reasons why they would do that without the benefit of the claimed invention have not been exposed by the opponent, beyond staying that the PSA would be “motivated to make such a modification”. As such, the opponent has not established that claims do not lack inventive step in light of D4.

   Conclusion – inventive step

7. The opponent has not established its case.  On the evidence before me, I cannot find that the claims lack an inventive step.

   Utility – legal principles

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

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

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

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

9. The effect of subsection 3 is such that the insertion of section 7A added the specific, substantial and credible use criteria to the existing case law on utility, rather than displacing it.  This is explicitly stated in the Explanatory Memorandum to the RTB Act:

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

   …

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

   Currently, the US courts interpret the terms as follows:

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

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

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

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

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

    Put another way, the two questions are: first, what is the promise of the invention derived from the whole of the specification?; second, by following the teaching of the specification, does the invention, as claimed in the patent, attain the result promised for it by the patentee?: Décor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 at 394 (‘Décor v Dart’), Lockhart J (in the Full Court); Welcome Real-Time SA v Catuity Inc [2001] FCA 445; (2001) 113 FCR 110 at 144 [160], Heerey J; H Lundbeck A/S v Alphapharm Pty Ltd … [2009] FCAFC 70; (2009) 177 FCR 151 at 198 [217] (‘Lundbeck’), Bennett J; Ranbaxy Australia Pty Ltd v Warner-Lanbert Co LLC [2008] FCAFC 82; (2008) 77 IPR 449 at 479 [141], Emmett, Weinberg and Bennett JJ. Further, ‘everything’ that is within the scope of a claim must be useful, that is, attain the result promised for the invention by the patentee: Lundbeck at 172 [81], Emmett J.”[54] (my bolding)

    [54] [2016] FCAFC 29 at [120]-[121]

11. The opponent submitted that the claims lacked utility.

    The promised benefit

12. The opponent pointed to paragraph [0002] the description of the application, which states:

    “This disclosure is generally directed to ground engaging wear member assemblies including adapters for securing excavating wear members to bucket lips.  More particularly, this disclosure is directed to stabilizing load bearing surfaces between adjacent wear members.”

13. The opponent submitted that the promise of the invention was stabilised load bearing surfaces between adjacent wear members.  The applicant did not necessarily disagree with this, but noted that the application identified that the adapter included load bearing surfaces on angled side surfaces, which may be disposed in a manner to “providing stabilizing contact on more than one fit surface when the earth engaging wear assembly is subjected to a vertical or horizontal load.”[55] 

    [55] Specification at [0043]

14. I do not see the positions of the opponent and the applicant as starkly different.  Taking both submissions, it seems clear that the promise of the invention was to provide surfaces between the two members that are assembled together that served to create stability for the assembly when it was subjected to loads.

    Opponent’s submissions – utility

15. The opponent submitted that the claims had very few limitations and allowed for a very wide scope for the geometry of the respective adapter nose or wear member cavity.  In the opponent’s opinion the claims included within their scope any cross sections which have three or more sides, provided that two or more of the sides are “oblique”.  This could include a triangle, and, in the opponent’s opinion, a triangle would not meet the promise of the invention.

16. The opponent also submitted that the claims included as few as two bearing surfaces in their scope and did not specify in the claims where they were.  They stated that two bearing surfaces might provide support in response to loading from one direction, but not the opposite direction.  The opponent submitted that the evidence establishes that more bearing surfaces were required to resist loads from various directions.  In the opponent’s opinion, as few as two bearing surfaces would not meet the promise of the invention.  The opponent referred to the evidence for Dr DeWit, where he stated:

    “… claims 1 and [4] require as little as two bearing surfaces and do not require them to be in any particular place on the nose or wear member cavity.  For example, claims 1 and [4] don’t require the bearing surfaces to be angled bottom surfaces on either side of a horizontal bottom surface as described in paragraph [0094]”, [56]

    and

    “I don’t understand how there can be as few as two bearing surfaces.  A pair of bearing surfaces, one in the front and one in the rear, may support a tooth on a nose in response to one load in a particular direction, but in practice the tooth receives loads in all directions so you need lots of bearing surfaces.”[57]

    [56] DeWit 1 at [51]

    [57] Ibid at [54]

17. Referring to figure 2 of the specification (see [11] above), the opponent submitted that the claim could include within its scope a nose and tooth where the intermediate surfaces 216a and 216c, or forward surfaces 202a and 202c, or a rear surface 204c and a front surface 202a were the only bearing surfaces and such an arrangement could not meet the promise of the invention because the arrangement would not take the loads coming from various directions.

    Applicant’s submissions – utility

18. The applicant submitted that the opponent’s position disregarded the requirements of the claims of forward, intermediate, and rear portions, with each portion having a plurality of surfaces angled with respect to the longitudinal axis at a different angle to the surfaces of the other two portions and being oblique in cross section.  The applicant pointed to Dr DeWit’s evidence where he stated:

    “It was known that a face is best at resisting a force perpendicular to it (i.e., normal to a largely planar portion of the surface) although it was also known that an angled face had the advantage of resisting both horizontal and vertical forces, however of course less efficiently than a surface normal to an applied force”,[58]

    and the evidence of Mr Ashworth stating:

    “… the purpose of the oblique bearing surfaces in the Opposed Application is to prevent side swipe, resist rotation, keep the wear member centred on the adapter nose and resist vertical and horizontal loading from digging forces.

    In adapters with purely horizontal bearing surfaces, the tooth can pivot sideways during digging operations.  Instead of providing purely horizontal and vertical bearing surfaces, the system of the Opposed Application has been designed with oblique bearing surfaces to centre the tooth on the nose and stop it moving side to side.

    … as noted several times in the opposed specification at paragraphs [0079], [0081], [0083], [0084] Because each bearing surface is angled, each bearing surface is able to resist both horizontal and vertical loading”,[59]

    and submitted that the nose, having three portions with a plurality of oblique and angled surfaces (at different angles in each portion), with at least two of the oblique surfaces being load bearing, would resist both horizontal and vertical forces and be “stabilizing”, thereby satisfying the promise of the invention.

    [58] Ibid at [30]

    [59] Ashworth [43o]–[43r] (italics in original)

19. Noting Dr DeWit’s statement that a pair of bearing surfaces, one in the front and one in the rear, may support a tooth on a nose in response to one load in a particular direction, but not in the opposite direction, the applicant submitted that whether or not the two bearing surfaces provide stabilising support to loading from the opposite direction did not go to the promise of the invention.  The applicant submitted that the promise of the invention was not directed to providing the optimal wear member assembly, but a promise of providing stabilising load bearing surfaces.  The applicant submitted that this was what had been provided.  The applicant also submitted that no evidence had been led that established something that was within the claim did not meet the promise.

    Consideration

20. In my opinion, the opponent has not made its case.  I take the point that the claim includes within its scope an arrangement where one oblique surface in the rear portion and one oblique surface is the forward portion are the only bearing surfaces, but I do not see how I can conclude that this would not achieve the promise of the invention of providing stabilising contact on more than one fit surface when the earth engaging wear assembly is subjected to a vertical or horizontal load.  There is no evidence of this.  I certainly agree that such an arrangement could well be less efficient that one where there are a considerable number of oblique bearing surfaces, but, as I read the specification, it is the provision of oblique bearing surfaces that allows vertical and horizontal loads to be simultaneously resisted.  This is a feature in all claims.

21. I cannot conclude that the claimed invention lacks utility.

    Section 40

    Support

22. Subsection 40(3) as amended by the RTB Act requires that the claims must be supported by matter disclosed in the specification.  The requirement of support can be summarised as requiring that the scope of the claims “should correspond to the technical contribution to the art”.[60]  In Merck Sharp & Dohme Corporation v Wyeth LLC (No 3)[61] Burley J confirmed that the following summary provided by Aldous J in Schering Biotech Corp’s Application, and often followed in the United Kingdom, encapsulates broadly the approach in Australia:

    “…to decide whether the claims are supported by the description it is necessary to ascertain what is the invention which is specified in the claims and then compare that with the invention which has been described in the specification.  Thereafter the court’s task is to decide whether the invention in the claims is supported by the description.  I do not believe that the mere mention in the specification of features appearing in the claim will necessarily be a sufficient support.  The word ‘support’ means more than that and requires the description to be the base which can fairly entitle the patentee to a monopoly of the width claimed.”[62]

    [60] Fuel Oils/EXXON (T 409/91) [1994] OJ EPO 653 at 659 (‘Exxon’).

    [61] [2020] FCA 1477 (Merck) at [546].

    [62] [1993] RPC 249 at 252-253

23. In CSR Building Products Limited v United States Gypsum Company[63] the Commissioner’s delegate summarised[64] the approach to determining whether the requirements of support are satisfied as follows, which remains relevant in view of subsequent Federal Court decisions:[65]

    (i)        construe the claims to determine the scope of the invention as claimed,

    (ii)       construe the description to determine the technical contribution to the art, and

    (iii)      decide whether the claims are supported by the technical contribution to the art.

    [63] [2015] APO 72 (CSR)

    [64] CSR at [115]

    [65] See, e.g. Merck at [546]-[547], Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd [2022] FCA 540 (Jusand) at [481]

24. Claims will exceed the technical contribution to the art when they claim products that the specification does not enable[66], or cover ways of achieving the desired result which owe nothing to the patent, or any principle disclosed therein.[67]  Additionally, a claim may lack support when, by including a feature not disclosed in the specification, or omitting a feature that is disclosed, it defines an invention that is materially different to what is described in the body of the specification.[68]

    [66] Merck at [553], TCT Group Pty Ltd v Polaris IP Pty Ltd [2022] FCA 1493 at [243]-[244]

    [67] Jusand at [483]

    [68] Calix Limited v Grenof Pty Ltd [2023] FCA 378 at [128]

25. The opponent submitted that the claims lacked support due to:

    (i)the claims including unsupported configurations within their scope;

    (ii)“oblique in cross-section” did not appear in the description; and

    (iii)the requirement in claim 5 that the oblique surfaces also be “non-planar” to one another, when such a requirement was not described.

    Support – unsupported configurations

    Opponent’s submissions

26. The opponent submitted that the claims lacked support under this particular for essentially the same reasons as those raised under the ground of utility.

27. The opponent submitted that the claims contained very few limitations on the geometry of the corresponding adapter nose or wear member cavity and could define an arrangement with two oblique bearing surfaces, with these bearings surfaces not necessarily being located in the same portion of the nose/cavity.  Noting that all of the embodiment of the specification were directed to arrangements that were octagonal in cross-section, and that the specification did not explain how other configurations, or a lesser number of “sides”, would work, the opponent submitted that the contribution that the specification made to the art was an arrangement of octagonal shape.  Since the claims were not so limited, they could not be supported.

    Applicant’s submissions

28. The applicant submitted that, having identified that a problem in the art was a lack of stability of the wear member/adaptor nose arrangement, the inventors had created an arrangement having a specific configuration of three portions, with each portion having a plurality of surfaces angled with respect to the longitudinal axis at a different angle to the surfaces of the other two portions and being oblique in cross section, where a plurality of those oblique surfaces were shaped and sized as load bearing surfaces.  In the applicant’s opinion, it was that wear member assembly and wear member, with that combination of features and specific geometry, which was the technical contribution to the art made by the inventors of the application. 

    Consideration

29. In my opinion, the applicant’s position is the correct one.  I accept the opponent’s observation that the description discusses octagonally-shaped (in cross-section) nose surfaces and tooth cavity surfaces, but the fact is that such oblique bearing surfaces are what are described as being provided.  Indeed, it could be said that the octagonal shape is simply the best method, rather than the only method.  It is clear to me that the technical contribution which addresses the problem of a non-stabilised arrangement is the provision of oblique bearing surfaces.  In this regard, as the applicant drew to my attention, I note the specification states:

    “In some implementations, the adapter of the earth engaging wear assembly includes fit surfaces on angled side surfaces.  These fit surfaces may be disposed in a manner that provides stabilizing contact on more than one fit surface when the earth engaging wear assembly is subjected to a vertical load or a horizontal load.  For example, an applied vertical downward load may be supported by two angled fit surfaces, and an applied vertical upward load may be supported by two separate angled fit surfaces.  Likewise, a left horizontal load may be supported by two angled fit surfaces and a right horizontal load may be supported by two angled fit surfaces.  In some implementations, a set of angled fit surfaces are disposed at a distal or leading portion of the adapter nose and another set of angled fit surfaces are disposed at a proximal or trailing portion of the adapter nose.  In this manner, a wear member, such as a tooth, may be supported by angled fit surfaces at both at the distal end and the proximal end of the adapter nose.”[69]

    [69] Specification at [0043]

1. Notwithstanding the use of “some implementations”, it seems quite clear to me that the ability of a surface to resist both vertical and horizontal loads is achieved by it being angled (i.e. oblique).  This technical contribution is in the claims.  I do not consider the claims to extend beyond this.

   Support – “oblique in cross-section”

   Opponent’s submissions

2. The opponent submitted that the phrase “oblique in cross-section” did not appear in the specification other than in the claims and the consistory clauses for those claims.  In their opinion, this meant that there is no support in the specification for an adaptor nose or wear member with surfaces which are described as “oblique in cross-section”.

   Applicant’s submissions

3. The applicant responded by stating:

   “… the requirement of surfaces ‘oblique in cross-section’ is described throughout the Application: see, e.g., [0079] of the Application.”[70]

   [70] Applicant’s written submissions at [9.13]

   Consideration

4. The opponent has not made out its case.  While it may be the case that the phrase “oblique in cross-section” is not used while the embodiments are discussed in the specification (even in paragraph [0079]), such a concept is shown in the figures.  It cannot be said that there is no support for this feature.

   Support – “non-planar”

5. The opponent stated that claim 5 required the oblique in cross-section bearing surfaces of the rear portion and the forward portion to be “non-planar” with the oblique in cross section surfaces of the intermediate portion, but no embodiment described surfaces which were “oblique in cross-section” to also be “non-planar” to one another. 

6. The applicant responded stating that paragraph [0049] of the specification disclosed surfaces being non-planar with each other.

7. The opponent replied, noting that paragraph [0049] stated (with reference to figure 2 – see [11] above):

   “Accordingly, the upper facing surface 216a may be non-planar with the adjacent upper surface 204e of the rear portion 207 and non-planar with the adjacent top surface 202e of the front portion 205.  In a similar manner, the lower facing surface 216b of the intermediate portion 209 may extend at an angle different than both the adjacent bottom surface 204g of the rear portion 207 and the bottom surface 202g of the front portion 205.”

   The opponent observed that, while surface 216a was clearly non-planar with surfaces 204e and 202e, surfaces 204e and 202e were not described as oblique surfaces.  The opponent stated that claim 5 referred to the oblique surfaces being non-planar to one another, but there was no description that told the reader how that could be.

   Consideration

8. I believe that the opponent has made too much of the language.  I acknowledge that the specification has referred to an oblique surface and what could be termed a horizontal surface when discussing non-planarity.  However, that does not mean that there is no disclosure of non-planar oblique surfaces.  There is clear disclosure of three different portions, clear disclosure of each portion having a number of oblique surfaces, and clear disclosure of the surfaces of the three different portions being angled with respect to the longitudinal axis at different angles.  It seems to me that, given these disclosures, the non-planarity of the oblique surfaces in one portion of the nose/tooth with the oblique surfaces in the other portions (even those that might be considered parts of a “single” surface) is the inevitable outcome.  

   Conclusion – support

9. The opponent has not established that the claims lack support.

   Clear enough and complete enough disclosure (Sufficiency)

10. Section 40(2)(a) of the Act requires that the complete specification must disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art.

11. In CSR the delegate determined that the steps involved in assessing whether the disclosure requirement is satisfied are:

    (i)Construe the claims to determine the scope of the invention as claimed;

    (ii)Construe the description to determine what it discloses to the person skilled in the art; and

    (iii)Decide whether the specification provides an enabling disclosure of all the things that fall within the scope of the claims.”[71]

    [71] CSR at [95]

12. In Evolva SA[72], another Deputy Commissioner reformulated the third question stated in CSR as a two-step consideration:

    (a)Is it plausible that the invention can be worked across the full scope of the claim?

    (b)Can the invention be performed across the full scope of the claim without undue burden?[73]

    The approaches taken in CSR and Evolva have found approval with the Federal Court in Cytec Industries Inc. v Nalco Company[74].

    [72] [2017] APO 57 (Evolva)

    [73] Evolva at [45].

    [74] [2021] FCA 970 (Cytec) at [143]-[149]; 162 IPR 202.

13. I also note that in Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd it was stated:

    “It will be seen that, like this case, Regeneron [being the UK Supreme Court decision Regeneron Pharmaceuticals Inc v Kymab Ltd [2020] UKSC 27; [2020] RPC 22] was concerned with the question of when a range is relevant. Regeneron had submitted that the invention in the patent was the idea of using a reverse chimeric locus to solve the problem of immunological sickness in transgenic mice and that the range of the human variable region over which a reverse chimeric locus could be applied was not relevant to its invention. The Supreme Court rejected this contention. Having examined the English and European authorities, Lord Briggs for the majority of the Supreme Court set out this test at [56]:

    Reflection upon those European and UK authorities yields the following principles:

    (i)The requirement of sufficiency imposed by art. 83 of the EPC exists to ensure that the extent of the monopoly conferred by the patent corresponds with the extent of the contribution which it makes to the art.

    (ii)In the case of a product claim, the contribution to the art is the ability of the skilled person to make the product itself, rather than (if different) the invention.

    (iii)Patentees are free to choose how widely to frame the range of products for which they claim protection.  But they need to ensure that they make no broader claim than is enabled by their disclosure.

    (iv)The disclosure required of the patentee is such as will, coupled with the common general knowledge existing as at the priority date, be sufficient to enable the skilled person to make substantially all the types or embodiments of products within the scope of the claim.  That is what, in the context of a product claim, enablement means.

    (v)A claim which seeks to protect products which cannot be made by the skilled person using the disclosure in the patent will, subject to de minimis or wholly irrelevant exceptions, be bound to exceed the contribution to the art made by the patent, measured as it must be at the priority date.

    (vi)This does not mean that the patentee has to demonstrate in the disclosure that every embodiment within the scope of the claim has been tried, tested and proved to have been enabled to be made.  Patentees may rely, if they can, upon a principle of general application if it would appear reasonably likely to enable the whole range of products within the scope of the claim to be made.  But they take the risk, if challenged, that the supposed general principle will be proved at trial not in fact to enable a significant, relevant, part of the claimed range to be made, as at the priority date.

    (vii)Nor will a claim which in substance passes the sufficiency test be defeated by dividing the product claim into a range denominated by some wholly irrelevant factor, such as the length of a mouse’s tail.  The requirement to show enablement across the whole scope of the claim applies only across a relevant range.  Put broadly, the range will be relevant if it is denominated by reference to a variable which significantly affects the value or utility of the product in achieving the purpose for which it is to be made.

    (viii)Enablement across the scope of a product claim is not established merely by showing that all products within the relevant range will, if and when they can be made, deliver the same general benefit intended to be generated by the invention, regardless how valuable and ground-breaking that invention may prove to be.”[75] (my bolding)

    [75] [2023] FCAFC 178 (Jusand) at [186]

    Opponent’s submissions

14. The opponent submitted that, for essentially the same reasons as those they put forward in respect of support, the claims did not comply with s 40(2)(a). The opponent submitted that there was no enabling disclosure of all things falling with the scope of these claims. Considering the “relevant range” approach of Jusand, the opponent submitted that the relevant range was the combination of surface geometry and bearing surfaces, and these elements affected the utility of a nose and wear part product in achieving its purpose.  In the opponent’s opinion, the application only enabled certain combinations of surface geometry and bearing surfaces (i.e. an octagonal shape with more than two bearing surfaces) and did not provide any guidance on the selection of geometry or bearing surfaces other than those exemplified.

    Applicant’s submissions

15. The applicant submitted that no evidence had been supplied that established that the PSA could not have made all of the embodiments of the wear member assembly within the scope of the claims.  The applicant contrasted the present matter with that of Jusand in which there was evidence that, once a material other than steel was selected, the PSA effectively needed to invent the claimed product from scratch.  They noted that the opponent’s position under inventive step that it would be a simple matter to adapt existing adapter noses and teeth to produce assemblies that fell within the scope of the claim, was at odds with their position in this ground that more information was required. 

    Consideration

16. The opponent has not made out its case.  I cannot see any evidence on file upon which I might be able to base a conclusion of lack of sufficiency.  Certainly, geometry plays a part, but it seems clear to me that the adjustment of geometry is well within the skill of the PSA.  Note that I am not stating that the claimed invention would be produced as a matter of routine.  As I have already concluded under inventive step, it is the feature of bearing surfaces being oblique in cross-section and portions having different angles with respect to the longitudinal axis that are not part of the PSA’s “toolbox”.  However, once appraised of these requirements, the PSA would, on the basis of the evidence before me, be able to make everything within the scope of the claims.

    Conclusion – sufficiency

17. On the evidence before me, I cannot conclude that the claimed invention is not described in a clear enough and complete enough manner.

    Clarity

18. The statutory basis for clarity is given at s40(3) of the Act which states that the claims must be clear and succinct. 

19. The requirement for the claims to be clear does not mean that terms used in claims must be precise or absolute, as noted in Flexible Steel Lacing Company v Beltreco Ltd [2000] FCA 890 at [81]; (2001) 49 IPR 331 at 349 (and cited with approval in Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag [2008] FCAFC 121; (2008) 77 IPR 229):

    “Lack of precise definition in claims is not fatal to their validity, so long as they provide a workable standard suitable to the intended use … The consideration is whether, on any reasonable view, the claim has meaning … In determining this, the expressions in question must be understood in a practical, commonsense manner … Absurd constructions should be avoid … and mere technicalities should not defeat the grant of protection …”

20. Where terms in claims are unclear, recourse may be made to the specification to resolve the ambiguity; see Interlego AG v Toltoys Pty Ltd [1973] HCA 1 at [14]; (1974) 130 CLR 461 at 479:

    “If the expression is not clear it is then permissible to resort to the body of the specification to define or clarify the meaning of words used in the claim without infringing the rule that clear and unambiguous words in the claim cannot be varied or qualified by reference to the body of the specification …”

21. The opponent submitted several items under this ground.  They asserted that:

    (i)“bearing surface”;

    (ii)“oblique in cross-section”;

    (iii)“angled”; and

    (iv)Claim 5, requiring surfaces be “non-planar”,

    were not clear.

    Parties’ submissions

22. The opponent stated that, assuming a “bearing surface” was a surface that was in contact at the “initial” fit (as submitted by the applicant), then the claims lacked clarity because the PSA would not be able to determine when the initial fit was.  The opponent wondered if this would be the very first time the tooth was placed on the nose, or if it included the first day, week or month of use.

23. The opponent submitted that “oblique in cross-section” lacked clarity because the application provided the PSA no workable standard to determine what degree of curvature could be present on a surface before the surface was no longer consider “oblique”.

24. The opponent further submitted that “angled” was unclear because, assuming something was to be considered “angled” only after a certain minimum angles was exceeded, the specification provided no guidance or workable standard to enable the PSA to determine when that minimum angle has been exceeded such that the surface they were looking at fell within the scope of the claims.

25. Finally, the opponent submitted that claim 5 was not clear because, while it defined the oblique surfaces to be “non-planar”, it was appended to claim 4 which defined the oblique surfaces as being angled with respect to the longitudinal axis of the tooth at different angles.  The opponent submitted that, as the surfaces had already been defined as being at different angles, they were already non-planar in claim 4 which meant that claim 5 was redundant.

26. The applicant responded by simply noting that a practical, commonsense approach was to be adopted when construing the claims and, when such an approach was taken, the claims provided a workable standard.

    Consideration

27. I do not agree with the opponent.  I have considered each of the terms “bearing surface”, “oblique in cross-section” and “angled” earlier in this decision and have been able to construe them. 

28. As to the possible redundancy of claim 5, while I accept that the non-planarity of the surfaces can be said to have already been established by claim 4, claim 5 defines more than just this feature.  It also defines that all oblique angled surfaces of the rear portion and the forward portion are bearing surfaces, while claim 4 has no such limitation.  Redundancy does not arise.

    Conclusion – clarity

29. I have not found that the claims lack clarity.

    Conclusion

30. The opposition is unsuccessful.  The claims are novel and do not, on the evidence, lack an inventive step.  No claim lacks support or clarity, and there is a clear enough and complete enough disclosure of the claimed invention.  I will direct that, subject to appeal, the application proceed to grant.

    Costs

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

    Greg Powell

    Delegate of the Commissioner of Patents

    Annex

    1.        A wear member assembly comprising:

    an adapter nose having a longitudinal axis, the adapter nose comprising:

    a forward portion having a plurality of outwardly facing surfaces angled with respect to the longitudinal axis of the nose at a first angle, the outwardly facing surfaces of the forward portion being oblique in cross-section;

    an intermediate portion having a plurality of outwardly facing surfaces angled with respect to the longitudinal axis of the nose at a second angle different than the first angle, the outwardly facing surfaces of the intermediate portion being oblique in cross-section; and

    a rear portion having a plurality of outwardly facing surfaces angled with respect to the longitudinal axis of the nose at a third angle different than the first angle and the second angle, the outwardly facing surfaces of the rear portion being oblique in cross-section;

    wherein a plurality of the surfaces that are oblique in cross-section being shaped and sized as bearing surfaces to bear against a wear member fit over the adapter nose.

    2.        The wear member assembly of claim 1, wherein the forward portion comprises a front abutment surface and two non-bearing surfaces and four substantially planar bearing surfaces, at least two of the four substantially planar bearing surfaces being oblique in cross-section.

    3.        The wear member assembly of claim 1 or 2, wherein the rear portion comprises two additional surfaces forming substantially vertical side surfaces.

    4.        A wear member shaped to receive a support structure, comprising:

    a front end and a rear end, the rear end having a cavity formed therein defining a longitudinal axis, the cavity comprising:

    a forward portion having a plurality of inwardly facing surfaces angled with respect to the longitudinal axis at a first angle, the inwardly facing surfaces of the forward portion being oblique in cross-section;

    an intermediate portion having a plurality of inwardly facing surfaces angled with respect to the longitudinal axis at a second angle different than the first angle, the inwardly facing surfaces of the intermediate portion being oblique in cross-section;

    a rear portion having a plurality of inwardly facing surfaces angled with respect to the longitudinal axis at a third angle different than the first angle and the second angle, the inwardly facing surfaces of the rear portion being oblique in cross-section; and

    a plurality of the surfaces oblique in cross-section being shaped and sized as bearing surfaces to bear against a support structure.

    5.        The wear member of claim 4, wherein the surfaces of the rear portion are bearing surfaces and the surfaces of the forward portion are bearing surfaces, and wherein the surfaces of the intermediate portion are non-planar with the bearing surfaces of the rear portion and non-planar with the bearing surfaces of the forward portion.

    6.        The wear member of claim 4 or 5, wherein the rear portion forms an octagonal shape.

    7.        The wear member of any one of claims 4 to 6, wherein both the rear portion and the forward portion comprise bearing surfaces arranged to resist horizontal and vertical loading.

    8.        The wear member of any one of claims 4 to 7, wherein the rear portion of the cavity comprises a downward facing surface having a first protrusion extending therefrom and comprises an upward facing surface having a second protrusion extending therefrom.

    9.        The wear member of claim 8, wherein the first and second protrusions form bearing surfaces configured to bear against a support structure insertable into the cavity.

    10.      The wear member of claim 8 or 9, wherein the first and second protrusions are shaped to form an arc.

    11.      The wear member of claim 8 or 9, wherein the first and second protrusions form cross-sectional arcs having tangents at oblique angles.

    12.      The wear member of any one of claims 4 to 11, further comprising a set of four pockets extending into angled surfaces of the rear portion configured to receive corresponding projections extending from angled surfaces of a nose.