CQMS Pty Ltd v Sandvik Intellectual Property AB

[2025] APO 1

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

CQMS Pty Ltd v Sandvik Intellectual Property AB [2025] APO 1

Patent Application:             2016430503

Title:Attachment status monitoring of ground engaging tools (GET) at heavy machinery

Patent Applicant:                Sandvik Intellectual Property AB

Opponent:CQMS Pty Ltd

Delegate:Pradnya Satarkar

Decision Date:  28 January 2025

Hearing Date:  29 October 2024, via videoconference

Catchwords:  PATENTS - opposition to the grant of the patent under s59 – construction – inventive step – utility – support – clear enough and complete enough disclosure – best method known to the applicant – opposition successful on the ground of inventive step – costs awarded – applicant given opportunity to amend

Representation:                   Counsel for the applicant: Mr Marcus Fleming

Patent attorney for the applicant: Mr Chris Schlicht and Mr Peter Wassouf of Phillips Ormonde Fitzpatrick

Counsel for the opponent: Mr Peter Creighton-Selvay

Patent attorney for the opponent: Dr Andrew Scott of James & Wells

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application:             2016430503

Title:Attachment status monitoring of ground engaging tools (GET) at heavy machinery

Patent Applicant:                Sandvik Intellectual Property AB

Date of Decision:                28 January 2025

DECISION

The Opposition is successful.  Claims 1-17 and 20 do not involve an inventive step.

I allow the Applicant two (2) months from the date of this decision to propose amendments to

overcome the lack of inventive step.

I award costs according to Schedule 8 against the Applicant, Sandvik Intellectual Property AB.

REASONS FOR DECISION

Background

1. Patent application 2016430503 (the application) was filed in the name of Sandvik Intellectual Property AB (the Applicant) on 25 November 2016 as PCT application no. PCT/EP2016/078841 and entered the Australian National Phase on 15 May 2019.  The application has an earliest priority date of 25 November 2016.

2. Following examination, the application was advertised accepted on 02 February 2023. CQMS Pty Ltd (the Opponent) filed a Notice of Opposition under section 59 of the Patents Act1990 (the Act) on 02 May 2023.

3. The statement of grounds and particulars (SG&P) was filed on 02 August 2023.  Evidence in Support (EIS) was filed on 02 November 2023.  Evidence in Answer (EIA) was filed on 02 February 2024.  Evidence in Reply (EIR) was filed on 26 March 2024. 

4. The Opponent filed a written summary of submissions (the Opponent’s Written Submissions) on 15 October 2024.  The Applicant filed their summary of submissions (the Applicant’s Written Submissions) on 22 October 2024.

   Grounds of opposition

5. The SG&P identified the following grounds of opposition:

   ·Lack of novelty

   ·Lack of inventive step

   ·Lack of clarity

   ·Lack of best method

   ·Lack of support

   ·Lack of sufficiency

   ·Lack of manner of manufacture

   ·Lack of utility

6. At the hearing, the grounds of novelty, clarity and manner of manufacture were not pressed.  The ground of best method was raised in a manner which did not reflect the particularisation in the SG&P.  This ground of lack of best method in the particular form was first raised in the Opponent’s Written Submissions.  At the hearing, I mentioned to the parties that if I consider this ground relevant, I would write to parties and seek their views on the ground.  I do not consider this ground relevant in this case.  I have provided my reasoning at a later stage in the decision.

   The evidence

7. The parties filed their evidence that I have summarised in the table below:

Evidence	Declarant	Date filed	Reference	Exhibits
In Support	Nicholas Simon Hillier	02 November 2023	Hillier 1	NH-1 to NH-18
In Answer	Mehrdad Javadi	02 February 2024	Javadi	MJ-1 to MJ-2
In Reply	Nicholas Simon Hillier	26 March 2024	Hillier 2	NH-19

Applicable law and onus 

1. The application was filed after 15 April 2013. Consequently, the amendments of the Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (the RTB Act) apply to the present application.  This includes s 60(3A) of the Act, which provides that the Commissioner may refuse an application if satisfied on the balance of probabilities that a ground of opposition exists.  It is the opponent who carries the onus of proof.

   The specification

2. The specification as accepted is titled ‘Attachment status monitoring of ground engaging tools (GET) at heavy machinery’, has twenty-six pages of description, sixteen drawings and ends with twenty claims.

   The invention as described

3. The description generally relates to the status monitoring of ground engaging tools (GETs) attached to heavy machinery such as a bucket of an underground loader and to an electronic monitoring and communication system to prevent undesirable detachment and loss of GETs during use[1].

   [1] Specification at page 1 lines 20-23

4. The “Background art” section discusses the challenges encountered by mining machines in the environment they operate in when subjected to significant forces and stress.  The mining machines comprise wear parts that are capable of being replaced when damaged.  A typical bucket of an underground loader is fitted with a plurality of GETs in the form of interchangeable teeth secured to the lip or edge of the bucket.  The description states:

   “A particular problem with lost and unidentified GETs is the contamination of the bulk material that is being extracted and subsequently processed (by a crusher for example).  As will be appreciated, the introduction of an uncrushable GET into a crusher can cause significant damage and machine downtime.  Accordingly, systems have been proposed for the detection of detached GETs to try and prevent disruption to downstream material processing.”[2]

   [2] Ibid at page 2, lines 12-17

5. A brief discussion of many patent specifications about different ways of detection and identification of lost GETs follows.  The limitation of the existing systems can be summed up as:

   “However, existing GET detection systems are limited to the detection of detached GETs.  In particular, a GET embedded deeply within extracted bulk material may not be readily identifiable and may pass downstream undetected.  Additionally, such systems do not address the problem of the labour and time required to repair and/or reattach a lost GET at the heavy machinery.  Accordingly, what is required is a GET detection/monitoring system that addresses the above problems.”[3] (italics in original)

   [3] Ibid at page 2, lines 26-31

6. In the “Summary of the Invention” section, there is a high-level listing of a few different embodiments, each mentioning the “status of attachment” as follows:

   “One or more embodiments of the present invention may provide a monitoring system for monitoring a status of attachment of a ground engaging tool (GET) at a mining, earth moving or rock processing machine configured to output a status of attachment of the GET at the heavy machinery in real-time (i.e., as the machinery is in use).  One or more embodiments may provide a monitoring system that is sensitive to the attachment status of a GET so as to alert personnel to the loosening or partial failure of a mechanical connection of the GET to the heavy machinery.  Accordingly, one or more embodiments of the present invention may provide a system to avoid undesirable damage to the attachment mechanism of a GET and the unintentional GET detachment at a mining, earth moving or rock processing machine.”[4]

   [4] Ibid at page 3 lines 3-12

7. It is worth noting that the description further summarises the invention where the “status” monitoring includes both qualitative and quantitative status monitoring:

   “Disclosed herein is a GET attachment status monitoring system in which a proximity sensor is provided at the GET and is configured to sense a proximity of a GET relative to a region of the mining, earth moving or rock processing machine to which the GET is mounted.  Such a sensor is configured to transmit real-time data to a suitable receiver so as to provide live connection status monitoring.  Such status monitoring may be qualitative or quantitative relative to a predetermined and desirable connection status.  The subject invention may be implemented via RFID type technology in which an RFID tag coupled to a GET is capable of transmitting sensor data to a receiver for direct output to personnel and/or onward communication to a network or central hub.”[5]

   [5] Ibid at page 3, lines 14-22

8. The main embodiment of the invention can be best understood with the help of Fig 2 and associated description that I have reproduced below:

   “Referring to figure 2, the bucket lip 15 is formed at the leading edge of a generally platelike base of bucket 13.  Lip 15 is accordingly dimensioned so as to accommodate a set of GETs with each GET being detachably mounted at lip 15 via a releasable mechanical mounting.  The mounting comprises a shroud indicated generally by reference 18 configured to at least partially envelope the lip (leading edge) 15 at the mount region of the GET.  A boss 19 (formed from a weld component) is securely attached to lip 15 at the region of mounting of each GET.  A lock pin assembly 16 is releasably mountable at/within shroud 18 to provide a mechanical lock for attachment of the GET 14 to the lip 15 via the cooperative engagement of the boss 19 according to the components and attachment mechanism described within WO 2014/037780 the contents of which are incorporated herein by reference.  In particular, shroud 18 comprises an internal cavity 18a within which the lock and pin assembly 16 is mounted to abut against boss 19.  An RFID tag 17 is secured to GET 14 by mounting internally within a forward region of shroud cavity 18a.  According to the specific implementation, tag 17 comprises electronic components (as described with reference to figures 4 and 5) and is bonded to the GET 14 via an encapsulating material.  In particular, tag 17 is preferably encapsulated within the material that firstly acts as an adhesive to attach tag 17 to the forward region of shroud cavity 18a and secondly provides a moisture protective housing for tag 17.”[6]

   [6]Ibid page 15, line 23 to page 16, line 8

9. Elucidating the use of an “activator” in the system, the description further explains:

   “The present system also comprises a portable electronic ‘activator’ 20 primarily configured to activate and configure the set of RFID tags 17 for operation according to the subject invention.  Activator 20 (described further referring to figures 7 and 8) is configured for wireless communication 22 with the RFID tags 17 in addition to separate wireless communication 23 with a portable computer or suitable electronic device such as a personal digital assistant (PDA) 21.  As will be described in detail below, activator 20 and PDA 21 are configured to initially activate the tags 17 in situ within the working environment and in particular on initial installation and mounting of the GETs 14 at the bucket lip 15 prior to first use.”[7] (italics in original)

   [7] Ibid page 16, lines 10-18

10. The description also discusses the possibility of “closed” and “open” network in data communication between the GETs and receivers:

    “Tag configuration data 104 includes machine assembly number data 105; GET position at lip data 106; operating frequency data 107; initial calibration or set up data 108 and assigned bucket number data 109.  Such tag configuration data 104 is capable of being received from each tag 17 (at each respective GET 14) in parallel to the receipt of the active sensor data 94 so as to correlate sensor data 94 with a particular tag 17.  In particular, code data 36 enables transmission and receipt of sensor data 94 at receiver 29 such that receiver 29 receives exclusively active sensor data 94 from the GETs 14 mounted at the lip 15 of appropriate loader mounted bucket 13.  That is, signals from other GETs 14 mounted on different loaders 10 are effectively ignored by receiver 29 so as to provide a ‘closed network’ of communication 31 between the relevant GETs 14 mounted at the required ‘local’ bucket 13.”[8]

    “The present invention may provide a system for the local monitoring of the status of a plurality of GETs (for example at a bucket) with such a local network being compatible for use within a large operating environment that would typically contain a plurality of local operating networks associated with each independent mobile mining machine (for example low loader 10).  The present invention may also provide a system configured for SOS alert signalling such that the local networks may be extended so as to be ‘open’ in that a signal from a detached GET may be identified by a multiple devices and receivers within a mining environment outside of the initial local network configuration of the particular lost GET.  The subject invention may be advantageously implemented via RFID tag technology with such signal transmission being adaptable to suit different operating environments and in particular operational frequency ranges and to configure internal register settings and software function dependent upon regulations of the country and/or mine in which a GET is operative.”[9]

    [8] Ibid at page 20, lines 16-26

    [9] Ibid at page 26, lines 8-20

    The invention as claimed

11. The entire claim set of twenty claims is reproduced at Annex A. Claims 1, 11 and 20 are independent claims:

    1. A monitoring system for monitoring a status of attachment of a ground engaging tool (GET) at a mining, earth moving or rock processing machine, the system comprising:

    at least one GET detachably mountable at a mount region of a mining, earth moving or rock processing machine, said GET comprising an electronic tag;
               at least one proximity sensor provided at the GET and configured to sense a proximity of the GET relative to the mount region of the mining, earth moving or rock processing machine to which the GET is mountable, the proximity sensor being provided at the electronic tag; and
               a transmitter provided at the GET to transmit wirelessly proximity data to a receiver located remote from the GET; and
               an activator having a printed circuit board (PCB), a processor and a transceiver, the activator being configured for wireless communication with the electronic tag.

    11. A method of monitoring a status of attachment of a ground engaging tool (GET) at a mining, earth moving or rock processing machine, the method comprising:

    providing an electronic tag mounted to a GET detachably mountable at the mining, earth moving or rock processing machine;

    providing a proximity sensor at the GET, said proximity sensor being provided at the electronic tag;

    sensing the proximity of the GET relative to a mount region of the mining, earth moving or rock processing machine to which GET is mounted;

    transmitting wirelessly proximity data generated by the sensor to a receiver located remote from the GET; and

    storing, outputting and/or processing the proximity data at the receiver to monitor the attachment status of the GET based on the proximity data; and

    prior to generating the proximity data, activating the electronic tag using an activator configured for wireless communication with the electronic tag.

    20. A ground engaging tool (GET) mountable at a mining, earth moving or rock processing machine, the GET comprising:

    a main body having a ground engaging region to engage the ground and an attachment region to attach the GET at a mining, earth moving or rock processing machine;

    an RFID tag attached to the GET, the RFID tag comprising:

    • a printed circuit board (PCB);

    • a processor;

    • an antenna;

    • a battery; and 

    • at least one sensor comprising a proximity sensor to sense a proximity of the GET relative to a region of the mining, earth moving or rock processing machine to which the GET is mountable; wherein the RFID tag is configured to be activated wirelessly using an activator configured for wireless communication with the RFID tag. 

12. Claim 1 is a system claim, claim 11 being the corresponding method claim and claim 20 is an apparatus claim.  Claim 20 further defines additional features of the RFID tag (which is an example of the electronic tag defined in claims 1 and 11).

    The person skilled in the art (PSA) and the experts

13. It is well established that many of the issues in an opposition are answered by reference to the person skilled in the art:

    “He is the person to whom the patent is addressed and who must construe it.  He is the person whose knowledge will determine whether a patent is novel.  He is the person who will judge whether a patent is obvious.”[10]

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

14. The hypothetical skilled person works in the field with which the invention is connected and is a non-inventive person or team likely to have a practical interest in the subject matter of the invention.[11]  The present application relates to the monitoring of attachment of a ground engaging tool (GET) at a mining, rock processing or earth moving machine by using proximity sensor and RFID technology.  Therefore, the person skilled in the art will have experience or practical interest in this field.  The declarants in this matter are Mr Javadi from the Applicant and Dr Hillier from the Opponent.

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

15. Mr Javadi’s educational qualifications are in Mechanical Engineering[12].  His work experience involves working as a project engineer/design engineer in various fields of oil and gas, mining, and automotives.[13]  His work in the mining industry involved working with replaceable moving parts and different types of sensors along with measurement of parameters using a variety of sensors.[14]

    [12] Javadi at paragraph 2

    [13] Ibid at paragraphs 4 and 8

    [14] Ibid at paragraphs 8 and 9

16. Dr Hillier’s educational qualification includes a doctorate in Mechanical Engineering.[15]  His work experience extensively is in the field of mining involving research and development in relation to hydraulic excavators, recording data through sensors in hydraulic excavators, ranging sensor research and evaluation in mining robotics technologies etc.[16]

    [15] Hillier 1 at paragraph 12

    [16] Ibid at paragraphs 13 and 15

17. I consider that both the declarants are suitably qualified to provide evidence in this matter.  Where necessary to give preference to the evidence of one expert over another, I will give due consideration and provide reasoning where required.

    Principles of construction

18. Before construing the specification, I note the comments of Middleton J in Eli Lilly and Company Limited v Apotex Pty Ltd[17]:

    “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.”

    [17] [2013] FCA 214; 100 IPR 451 at [139].

19. As noted by the Full Court in Rokt[18], there is a limited role played by the expert evidence in construing the patent specification and the claims.  Typically, the Court will read the specification with the benefit of expert evidence as to the meaning of words that are terms of art, or with a explanation of technical concepts relevant to the understanding of the invention as described and claimed.  The question of construction remains with the Court.[19]

    [18] Commissioner of Patents v Rokt Pte Ltd [2020] FCAFC 86 (“Rokt”)

    [19] Rokt at [73]

20. More recently, the Full Court in Airco Fasteners Pty Ltd v Illinois Tool Works Inc.[20] 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,[21] 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.[22]  However, it is for the Court, not for any witness however expert, to construe the specification.[23]  A similar approach is taken in matters before the Commissioner.

    [20] [2023] FCAFC 7 at [48]

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

    [22] Kimberley-Clark Australia Pty Ltd v Airco Trading International Pty Ltd [2001] HCA 8; 207 CLR1 at [24]

    [23] Sartas No 1 at [485]-[486]

1. The correct approach to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd[24]:

   “the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear. … While the claims define the monopoly claimed in the words of the patentee’s choosing, the specification should be read as a whole … It is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification … terms in the claim which are unclear may be defined or clarified by reference to the body of the specification.”

   [24] [2009] FCAFC 70; 81 IPR 228 at 254, [118]-[120].

   Claims construction

2. In the present matter, the following terms in the claims are important for the determination of the opposition:

   i.“status of attachment”

   ii.“proximity”, “proximity sensor”, “proximity data”

   “status of attachment”

3. The Applicant’s position is that the status of attachment is an analogue assessment rather than a digital assessment, contrasting the monitoring system of claim 1 with a system that undertakes a binary assessment of determining only two states- “attached” or “not attached”.[25]  Relying on Mr Javadi’s evidence, the Applicant submits that the term “status” in this phrase “means the state or condition with respect to attachment” and that the phrase “status of attachment” means “whether the GET is fully attached, partially or loosely attached and therefore in the process of becoming detached, or fully detached”.[26]  The Applicant also refers to the present application where the problem with the earlier systems for the detection of detached GETs are discussed as:

   “existing systems are limited to the detection of detached GETs”[27]

   and describes the present system as being:

   “advantageous to identify progressive partial separation or loosening of a GET at the bucket lip during use and in particular prior to complete mechanical detachment of GET.”[28]

   [25] Applicant’s Written Submissions at paragraph 35

   [26] Ibid at paragraph 32

   [27] Specification page 2, line 26 and Applicant’s Written Submissions at paragraph 33

   [28] Specification page 18, lines 12-14 and Applicant’s Written Submissions at paragraph 33

4. The Opponent does not agree with the Applicant’s view of “status of attachment” being an analogue assessment.[29]  However, the Opponent while relying on Dr Hillier’s evidence submits that a system or method monitoring whether the GET is attached, not attached, or (potentially) partially attached, is a system or method falling within the scope of claims 1 and 11.[30]  The Opponent further submits that monitoring of  “complete detachment” involves monitoring a relevant status of attachment.[31]

   [29] Opponent’s Written Submissions at paragraph 36

   [30] Ibid at paragraph 35

   [31] Ibid at paragraph 34

5. I consider it inconsequential to assess whether the monitoring of the status of attachment is analogue or digital.  Neither is it judicious to narrow the scope of the claim to one or other kind of monitoring.  The specification covers both the possibilities of qualitative and quantitative status monitoring.[32]  I understand quantitative monitoring to be similar to digital monitoring where any two states can be monitored.  The plain meaning that can be given to the phrase “monitoring a status of attachment” in claims 1 and 11 is simply that there are at least two states of attachment that can be sensed/observed.  It need not include monitoring various degrees of attachment, but it may.  Further, I do not consider it correct to read the problem mentioned in the specification or the advantages associated with a specific embodiment in the specification to be included in the scope of the claim, without them being reproduced in the claims themselves.  At the hearing, the Applicant pointed to Dr Hillier’s evidence to state that to monitor something means to maintain regular surveillance.  I agree with that and note that regular surveillance is different from constant surveillance.

   [32] Specification at page 3, lines 18-19

6. Hence, “status of attachment” cannot be construed to require more than two states of attachment including partial separation or loosening, etc. as suggested by the Applicant.  Although all these are valid states of attachment, the phrase in the claim only requires sensing/detecting/monitoring of at least two states which can be “being attached” and “any other state”.  Hence, I consider monitoring of “complete detachment” as opposed to its “attachment” falls within the scope of the phrase “monitoring a relevant state of attachment”.

   “proximity”, “proximity sensor”, “proximity data”

   “proximity”

7. As per the Macquarie Dictionary (online edition, © Pan Macmillan Australia, 2024), the ordinary meaning of “proximity” is “nearness in place, time or relation”.

8. The Applicant in their submissions interpreted the term “proximity” as a relative term which calls for an assessment of the relative nearness of two or more things.[33]  The Opponent on the other hand in their submissions, while referring to Dr Hillier’s evidence state that the term “proximity” is always a binary state- whether an object is in proximity to another object or not.[34]

   [33] Applicant’s Written Submissions at paragraph 36

   [34] Opponent’s Written Submissions at paragraph 20

9. I do not consider it necessary to assess whether “proximity” is a binary or multi-state term.  Since, there is no definition provided for “proximity” in the specification, and in absence of any evidence to show that it is a special term in the art, I will use the ordinary meaning of “proximity” which in the context of claims is “nearness in place”.  There are no additional qualifiers required.

   “proximity sensor”

10. Regarding “proximity sensor”, which I consider has a technical meaning in the art, I will first refer to the evidence of the experts.  Dr Hillier stated that a “proximity sensor” is:

    any device that is able to output a signal that describes the relative distance between one thing and another (near or far, present or absent, or a distance measurement along a continuum from zero to beyond the sensor’s capability to detect).  In general, this class of sensors is very broad, and may operate on a wide variety of scales and varying technological or physical principles.  A proximity sensor generally does not provide information about direction between the sensor and an object, just that the object being measured is within the vicinity of the sensor.[35]

    [35] NH-11, page 2

11. Mr Javadi has provided his understanding of “proximity sensor” in the context of the present application stating that:

    “a proximity sensor”, in the context of this system, means any type of sensor that determines a small range of distances between the GET and the mount region.  The proximity sensor determines this distance in order that an assessment can be made as to whether the GET is fully attached or becoming loose, the latter being indicated by a small distance between the GET and the mount region that is less than the distance between the GET and the mount region once the GET is fully detached.  Hence the proximity sensor is of the type that determines small distances, typically in the order of a few millimetres to a few centimetres.[36]

    [36] Javadi declaration at paragraph 29

12. It appears that Mr Javadi’s definition of “proximity sensor” is based on his understanding of how the invention would work to solve a specific problem of determining a GET becoming loose before it is fully detached.  I find Mr Javadi’s understanding of “proximity sensor” to be unnecessarily narrowed to a specific embodiment of the invention.  I consider Dr Hillier’s definition of “proximity sensor” to be more holistic, free of gloss and hence, I would prefer that.

13. In their written submissions, the Opponent submitted that there is nothing in the claim language that requires the proximity sensor to determine a range of distances or values[37] and that a proximity sensor is distinct from a distance measurement sensor.[38]  The Applicant on the other hand, submitted that the phrase “proximity sensor” in the context of the application implies a measurement that determines a “small range” of distances.  I do not agree with either of the submissions as these are impermissibly narrow and as mentioned before, I prefer Dr Hillier’s definition of “proximity sensor” that comprises any of a near/far or present/absent sensor or a distance measurement sensor.

    “proximity data”

    [37] Opponent’s Written Submissions at paragraphs 23, 24

    [38] Ibid at paragraph 25

14. There is no disagreement between the parties that “proximity data’ is the information obtained by the “proximity sensor” that is further transmitted.  I agree.  Hence, as per the preferred meaning of “proximity sensor”, proximity data may be binary (that is present/absent or near/far), or a measure of a distance.

    Inventive step

15. It is a requirement of s 18(1) of the Act that the invention, so far as claimed in any claim, involves an inventive step.  s 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 the light of the common general knowledge, considered alone or together with the information identified in s 7(3).
    
    

16. s 7(3) defines the relevant information as:

    The information for the purposes of s 7(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 s (2) could, before the priority date of the relevant claim, be reasonably expected to have combined.

17. The test for whether an invention is obvious is whether it would have been a matter of routine to proceed to the claimed invention.

    “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.”[39]

    [39] Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12; 148 CLR 262 at 286.

18. More recently, the High Court in Aktiebolaget Hassle v Alphapharm Pty Ltd[40] referred with approval to this approach and further held:

    “That way of approaching the matter has an affinity with the reformulation of the ‘Cripps question’ by Graham J in Olin Mathieson Chemical Corporation vBiorex Laboratories Ltd [1970] RPC 157. This court had been referred to Olin in the argument in Wellcome Foundation. Graham J had posed the question:

    ‘Would the notional research group at the relevant date in all the circumstances directly be led as a matter of course to try [the claimed invention] in the expectation that it might well produce [the desired result]?’

    That approach should be accepted.”

    [40] [2002] HCA 59; 56 IPR 129 at 142-143 (“Alphapharm”).

19. The High Court in Alphapharm distinguished the matters of routine from other courses of action:

    “The tracing of a course of action which was complex and detailed, as well as laborious, with a good deal of trial and error, with dead ends and the retracing of steps is not the taking of routine steps to which the hypothetical formulator was taken as a matter of course.”[41]

    [41] Alphapharm at 436, [58]

    Common general knowledge (CGK)

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

    “The notion of common general knowledge itself involves the use of that which is known

    or used by those in the relevant trade.  It forms the background knowledge and experience

    which is available to all in the trade in considering the making of new products, or the

    making of improvements in old, and it must be treated as being used by an individual as a

    general body of knowledge.” [42]

    [42] Minnesota Mining and Manufacturing Co v Beiersdorf (Aust) Ltd [1980] HCA 9; 144 CLR 253 at 293

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

    “… information does not constitute common general knowledge merely because it might be found, for example, in a journal, even if widely read by persons in the art

    … Reference in this regard is made to the words of Luxmoore J in British Acoustic Films (1936) 53 RPC 221 at 250, cited by Lehane J in Aktiebolaget Hässle v Alphapharm Pty Ltd (1999) 44 IPR 593; [1999] FCA 628 at 605 [39]:

    In my judgment it is not sufficient to prove common general knowledge that a particular disclosure is made in an article, or series of articles, in a scientific journal, no matter how wide the circulation of that journal may be, in the absence of any evidence that the disclosure is accepted generally by those who are engaged in the art to which the disclosure relates.  A piece of particular knowledge as disclosed in a scientific paper does not become common general knowledge merely because it is widely read, and still less because it is widely circulated.  Such a piece of knowledge only becomes general knowledge when it is generally known and accepted without question by the bulk of those who are engaged in the particular art; in other words, when it becomes part of their common stock of knowledge relating to the art.”[43] (italics in original)

    [43] Ranbaxy Laboratories Limited v AstraZeneca AB [2013] FCA 368; 101 IPR 11 at [217] (“Ranbaxy v AstraZeneca”)

22. The common general knowledge that the Opponent summarised from the evidence and which the Applicant accepted at the hearing as not being in dispute between the parties is the following:[44]

    [44] Opponent’s Written Submissions at paragraph 47

    (a) mining equipment operates in a challenging environment and is typically subject to significant forces. To protect such equipment, it is possible to use wear parts, which can be replaced when worn or damaged; such wear parts include adaptors, teeth and shrouds, and are commonly referred to as “GET”;

    (b) GET can become detached from mining equipment, and if they do, this can create problems, including reduced operational performance of the mining equipment, damage to downstream processing equipment, and loss of production.

    (c) accordingly, it was well known that it was important to monitor whether GET had become worn or detached from mining equipment;

    (d) one way of monitoring wear or loss of GET was “by eye”;

    (e) however, there were also a number of systems, involving the use of sensors, for monitoring the wear or loss of GET in use at the priority date.  These included:

    (i) most relevantly, the placement of Radio Frequency Identification

    (RFID) tags on GET.  There was “widespread testing” of such

    technology in the field in the period 2011-2016 and both Dr Hillier

    and Mr Javadi were aware of the use of RFID tags on GET to detect

    the loss or detachment of GET.  There were “passive” RFID systems

    (which did not include a battery) and “active” RFID systems (which

    required the use of a local power source);

    (ii) less relevantly, vision based systems, in which digital cameras were

    used to monitor the wear or loss of wear parts, such as the Motion

    Metrics system.  However, it was known that the cameras may be

    impaired by dust.

    (f) when sensors were used in the field to monitor GET, they were typically used in two main locations.  First, they were embedded, attached or located within the GET itself. Second, they were located remote from the GET and essentially “looking” at the GET;

    (g) there were various types of sensors “which were commonly mounted on earth working equipment”, including proximity sensors, various camera systems (i.e. thermal or vision), accelerometers and rate gyros (contained in inertial measurement units), pressure sensors, strain gauges, thermo-couples and “many more”; and

    (h) digital radio transmission systems (wireless transmission) were commonly used in 2016 and the use of the aforementioned sensors (on or within GET) in conjunction with digital transmission devices was being widely proposed or implemented in the field.

23. I will proceed on the basis that these items are common general knowledge.

    The problem

24. A problem identified in the specification is detachment of a GET.[45]  A subsequent problem with detached GETs that are lost is the contamination of the bulk material that is being extracted and subsequently processed (by a crusher for example).  As will be appreciated, the introduction of an uncrushable GET into a crusher can cause significant damage and machine downtime.[46]

    [45] Specification at page 2 line 7

    [46] Ibid at page 2, lines 12-17

25. A further problem disclosed in the specification regarding the existing systems is that existing GET detection systems are limited to the detection of detached GETs.  In particular, a GET embedded deeply within extracted bulk material may not be readily identifiable and may pass downstream undetected.  Additionally, such systems do not address the problem of the labour and time required to repair and/or reattach a lost GET at the heavy machinery.[47]

    [47] Ibid at page 2, lines 26-31

26. Ultimately, it is the problem that is solved by the claimed invention that is relevant for inventive step analysis.  Based on my discussion under “Claims construction”, the broadest problem solved by the claimed invention is identifying detachment of a GET.

    Inventive step in light of s 7(3) documents

27. While there is, post-Raising the Bar, no requirement in s 7 for inventive step documents to be ascertained, understood and regarded as relevant, the problem remains relevant to the consideration of the prior art base.  The Explanatory Memorandum makes clear that the question remains whether a skilled person faced with the same problem would have taken routine steps to arrive at the claimed invention:

    “While a skilled person is essentially deemed to be aware of and to have carefully read the

    publicly available information, the inventive step tests are otherwise applied in the

    context of what the skilled person would have known and done before the priority date of

    the claims in question.  The tests will therefore continue to take account of factors such as

    whether the skilled person would have understood and appreciated the relevance of the

    prior art to the problem the invention was seeking to solve and whether it would be

    considered a worthy starting point for further investigation or development.”[48]

    [48] Explanatory memorandum, Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (Cth) (the “RTB EM”) at page 43

28. The Opponent submitted in their Written Submissions and at the hearing that the claimed invention lacks inventive step in light of US 2016/0237657 A1 (D7) combined with common general knowledge. I will discuss this document in detail below:

    D7: US 2016/0237657 A1 (Carpenter et al.) 18 August 2016

29. US 2016/0237657 A1 (D7) was published on 18 August 2016. Consequently, it is part of the prior art base.

    Claim 1

30. The Opponent submitted that D7 discloses every feature of claim 1, save for the use of an activator with specified characteristics, as set out in the following table in their Written Submissions.[49]

    [49] Opponent’s Written Submissions at paragraph 56

Integer	Claim feature	Exemplary disclosure in D7
1(i)	A monitoring system for monitoring a status of attachment of a ground engaging tool (GET) at a mining, earth moving or rock processing machine, the system comprising:	The abstract discloses that D7 concerns both a product and system for monitoring a characteristic including presence, condition, usage and/or performance of GET used on various kinds of earth working equipment”. See also: [0017], [0074], [0086], [0099], [0114], [0118] and [0122].
1(ii)	at least one GET detachably mountable at a mount region of a mining, earth moving or rock processing machine, said GET comprising:	This is disclosed in Figures 5 and 5A. The point/tip (15) is a GET which is detachably mounted at a mount region of the earth working equipment.
1(iii)	an electronic tag	The monitoring device (25) is an electronic tag. It is explained in D7 that the monitoring device: (i) can be “passive or active and may include a receiver, transmitter and/or a digital sensor” (at [0116]); (ii) may “include one or more electronic devices” (at [0068]); and (iii) may include a “transmitter 36 and a battery 37” and “one or more chips or other electronic devices” (at [0086]).
1(iv)	at least one proximity sensor provided at the GET	D7 discloses at [0019] that: “the at least one monitoring device may include one or more sensors from a group consisting of radio frequency enabled modules, orientation sensors, temperature sensors, accelerometers, proximity sensors, force sensors, and position sensors”. See also: [0116].
1(v)	and configured to sense a proximity of the GET relative to the mount region of the mining, earth moving or rock processing machine to which the GET is mountable,	Figure 5A discloses that the monitoring device (25) and electronic sensor (35) are located proximate to the mount region. The use of a proximity sensor in that location would sense a proximity of the GET relative to the mount region. This is also disclosed in Figures 6 and 8.
1(vi)	the proximity sensor being provided at the electronic tag; and	D7 repeatedly discloses that the proximity sensor may be provided at the electronic tag, for example: (i) “monitoring device 25 may generally include: one or more electronic devices or sensors”, which can be different components or “may be combined” (at [0068]); (ii) “the sensor portion of the monitoring device” (at [0072]); and (iii) “in one example, device 25 includes a sensor 35 mounted on a substrate 34 such as a printed circuit board” (at [0086]). Figures 8- 10, 16-18 and 20 all disclose the provision of the sensor (35) at the monitoring device (25).
1(vii)	a transmitter	D7 discloses that the monitoring device (25) “may generally include…a communication device 36 (e.g. a transmitter and/or receiver)” (at [0068]). See also: [0072]-[0072] and [0086].
1(viii)	provided at the GET	The transmitter (36) is located at the monitoring device (25) which is located at the GET (e.g. Figure 18). The signal path (62) from the monitoring device at the GET is depicted in Figure 12.
1(ix)	to transmit wirelessly	The monitoring device, utilising the transmitter, “communicates wirelessly using any of a variety of radio frequency protocols” (at [0018]). See also: [0072] and [0076].
1(x)	proximity data	The data transmitted is the data obtained by the monitoring device, including when used with a proximity sensor. The data transmitted will relate “to characteristics” of the GET, including “usage, condition, performance and/or presence” (at [0071]), being. See also: [0076] and [0115].
1(xi)	to a receiver located remote from the GET; and	The data is transmitted to a remote device (38) (at [0069]). The data “is received by a receiver 60, which in this example includes an antenna of the remote device 38” (at 0076]).
1(xii)	an activator	This is not disclosed but was obvious for the reasons set out below.
1(xiii)	having a printed circuit board (PCB),	This is not disclosed but was obvious for the reasons set out below.
1(xiv)	a processor	This is not disclosed but was obvious for the reasons set out below.
1(xv)	and a transceiver,	This is not disclosed but was obvious for the reasons set out below.
1(xvi)	the activator being configured for wireless communication with the electronic tag	This is not disclosed but was obvious for the reasons set out below.

1. The main point of dissent the Applicant raised for 1(i) is based on the interpretation of “status of attachment”.[50]  The Applicant contends that D7 does not specifically disclose monitoring various degrees of attachment/detachment of GET.  This may well be correct but as I note in my discussion under “Claims construction”, monitoring for attachment/detachment (or presence/absence) falls within the scope of the phrase “monitoring a status of attachment”.  D7 clearly discloses monitoring presence (and hence, absence) of GET (as per the abstract, paragraph [0009]).  Hence, I consider 1(i) to be disclosed in D7.

   [50] Applicant’s Written Submissions at paragraph 72

2. The next issue the Applicant raised is in relation to 1(iv).  They submitted that the disclosure of “proximity sensors” in D7 is limited to bare exemplary references in a list of sensors without any further detail regarding their use or intended use.[51]  The Opponent responded to this issue using Dr Hillier’s evidence that says that the proximity sensor in D7 is optional, but that does not exclude it from being used.[52]  I consider the disclosure of “proximity sensor” in D7 (paragraph [0019], [0116]) is sufficient for a skilled person to understand that a “proximity sensor” is present in the monitoring system.  The claim does not further specify any particular feature of the “proximity sensor”.  Hence, I consider 1(iv) to be disclosed in D7.

   [51] Ibid at paragraph 76

   [52] Hillier 2 at paragraph 74

3. The next point the Applicant raised is in relation to 1(v), submitting that there is no disclosure in D7 of a “proximity sensor” which is “configured to sense a proximity of the GET relative to the mount region of the… machine to which the GET is mountable”.[53]  The Applicant further pointed to paragraph [0122] of D7 to support this position[54]:

   “In one embodiment, with any of the monitoring devices, each ground-engaging product 15 on lip 5 includes a monitoring device 25.  The monitoring devices 25 detect each other in established positions for the equipment on which they are secured.  Alternatively (or in addition to), all the monitoring devices are detected by a remote device 38 (or a plurality

   of remote devices).  Loss of a product (e.g., through breakage or pin ejection) results in loss of the monitoring device from the established electronic framework, i.e., a significant change in position of the monitoring device is detected when one monitoring device deviates beyond a certain range of its established position with the other monitoring devices.  The range of expected motion caused, e.g., by digging is determined by considering such things as the type of ground engaging product, wear, the operation of the machine, etc.  Alternatively, the remote device 38 detects the positions of the monitoring devices 25 to ensure the presence of each product in its established position relative to the other monitoring devices 25.  In either case, by detecting the presence of the product through its relative position and orientation with the other products, the system operates irrespective of the movement and operation of the earth working equipment with the ground engaging products.”

   [53] Applicant’s Written Submissions at paragraph 76

   [54] Ibid at paragraph 78

4. The above paragraph is one of the embodiments and discloses the ability of “monitoring devices to detect each other or for the presence of such devices to be determined by their positions ‘relative to other monitoring devices”.[55]  It demonstrates using a remote device to monitor change in position of a monitoring device or a monitoring device/sensor leaving an electronic framework, indicating its loss.  I agree that paragraph [0122] of D7 does not disclose sensing proximity of the GET relative to the mount region of the machine.

   [55] Ibid at paragraph 79

5. However, the Opponent pointed to paragraph [0019] of D7 that states:

   “In another aspect of the invention, a monitoring device is secured to a ground engaging product to monitor characteristics such as part ID, presence, condition, usage and/or performance of the ground engaging product.  As examples, the at least one monitoring device may include one or more sensors from a group consisting of radio frequency enabled modules, orientation sensors, temperature sensors, accelerometers, proximity sensors, force sensors, and position sensors.” (my emphasis).

6. Moreover, the Opponent further highlighted Fig 5A in D7 which I have reproduced below:

7. At the hearing, the Opponent submitted that a skilled person reading D7 would know of a monitoring device connected to a GET, comprising a sensor (35) (which may be a proximity sensor) to monitor presence/absence (attachment/detachment) of GET at a location close to the mount region as displayed in Fig 5A and would understand it to mean that the proximity of GET in relation to the mount region is monitored (to sense presence/absence of GET).  

8. I consider that a very logical explanation.  I do not find any possible alternative interpretation of this figure in the Applicant’s submissions of that disclosure. 

9. The support for this interpretation is also found in Dr Hillier’s evidence:

   “In relation to feature (c) - there is definitely a proximity sensor, located at the GET, as part of the "electronic tag". If it is not "configured to sense a proximity of the GET relative to the mount region of the mining, earth moving or rock processing machine to which the GET is mountable", then what is it for?”[56]

   [56] Hillier 2 at paragraph 75(b)

10. Hence, I consider that D7 discloses the feature 1(v).

11. The Applicant then raised their argument against features 1(vii) to 1(xi) being disclosed in D7 based on the interpretation of the term “proximity data”.  The Applicant submitted that there is no disclosure of the use of “a transmitter provided at the GET to transmit wirelessly proximity data to a receiver located remote from the GET”.[57]  The Applicant objected to the Opponent’s reliance upon paragraphs [0071], [0076] and [0115] as disclosing transmission of proximity data as these paragraphs do not disclose relative nearness of the proximity sensor and only presence/absence which the Opponent is taking to be “proximity data”.[58]  As per my discussion under the “Claims construction”, any data from the proximity sensor whether it is presence/absence, or the distance measured can be considered to be proximity data.  Hence, I consider features 1(vii) to 1(xi) to be disclosed in D7.

    [57] Ibid at paragraph 83

    [58] Ibid at paragraph 83

12. Regarding features 1(xii) to 1(xvi), the Opponent submitted that these are not disclosed in D7.  The Opponent, however, further submitted that it would have been obvious to a PSA, in light of the CGK at the priority date, to use an activator to implement the monitoring system disclosed in D7.[59]  The Opponent pointed to Dr Hillier’s evidence where he stated:

    “This type of activation operation at the time of tag installation to increase the transmission power is (and was before November 2016) a common and well known practice for active (as opposed to passive) RFID tags.”[60]

    [59] Opponent’s Written Submissions at paragraph 78

    [60] Hillier 1 at paragraph 83

13. The Applicant on the other hand, pointed to another part of Dr Hillier’s evidence comparing features of the claim with the disclosure of D7[61] where he stated:

    “A device like the “activator” of the opposed patent is not disclosed (in D7).  However, the described “monitoring device” is similar to an active RFID tag and would probably require some mechanism to change or configure some settings of the device, or a power state (“storage” to “active” modes).  Despite this, some other (undisclosed) mechanism could be applied to achieve the same function.”[62] (my bolding)

    [61] Applicant’s Written Submissions at paragraph 85

    [62] NH-18, page 2, item 1(xii)

14. Based on this evidence, the Applicant noted that the use of an activator is expressed only as a probability, not an inevitability.[63]  Further, the Applicant noted that the use of an “activator” was not the only means of achieving the end.[64]

    [63] Applicant’s Written Submissions at paragraph 86

    [64] Ibid

15. Mr Javadi in his answer to Dr Hillier’s assertion that it is not clear how the activator can activate the electronic tag without the tag having receiving functionality stated:

    “The manner in which electronic tags interacted with an activator in order to be turned on was well known in November 2016 when AU 503 was filed.  I don’t believe the claim needs to recite every feature in order to enable each feature to operate.  It is clear to me that a tag would have a receiving capability in order to be activated.  This is also confirmed in various passages in the specification where there is a discussion of the tag being activated such as at page 6 lines 4-10, page 10 lines 6-15.”[65]

    [65] Javadi at paragraph 210

16. The above paragraph clearly appears to be an admission by Mr Javadi that the use of an activation operation using an activator for electronic tags was well known at the priority date.

17. I note that the CGK set out above includes the use of RFID tags (which are an example of an “electronic tag” of the claims) on the GET where these RFID tags could be active or passive.[66]  Both experts appear to state that the use of an activation operation for electronic tags was also known at the priority date.  The Applicant’s statement that the use of activator to activate the tag is expressed only as a probability, not an inevitability and also that it is not the only way to activate the tag, may well be true.  But obviousness does not require that there be a sure pathway, nor does it require only a single alternative.  Hence, based on the evidence before me, I am convinced that having chosen an active electronic tag in D7, a skilled person would as a matter of routine with a reasonable expectation of success proceed to use an activator along with its circuitry to activate the tag and reach the claimed invention.  

    [66] Opponent’s Written Submissions at paragraph 47(e)(i)

18. Claim 1 lacks inventive step in light of D7.

    Claims 11 and 20

19. Both the parties agreed that the fate of independent claims 11 and 20 would follow that of claim 1.[67]  I consider that the additional features added about the RFID tag in claim 20 are inconsequential to the inventive step analysis.  Hence, it follows that claim 11 and claim 20 lack an inventive step in light of D7.

    Claim 2

    [67] Applicant’s Written Submissions at paragraph 90; Opponent’s Written Submissions at paragraphs 87, 89

20. The Opponent submitted that the additional features of dependent claim 2 are disclosed in D7:[68]

    [68] Opponent’s Written Submissions at paragraph 86

2(i)	The system as claimed in claim 1 wherein the GET comprises a first part of a mechanical connection and the mount region comprises a second part of the mechanical connection,	This is disclosed in Figure 5. The GET is point/tip 15. It is first part of a mechanical connection. The mount region is intermediate adapter 13. It is a second part of the mechanical connection.
2(ii)	The GET capable of being detachably mounted at the mount region via a mating of the first part and the second part	This is disclosed in Figure 5

1. I have reproduced Fig 5 below:

2. Clearly, the two attachable parts are visible with GET (15) comprising the first part and the mount region (13) comprising the second part.

3. I consider that dependent claim 2 does not involve an inventive step in light of D7.

   Claim 3

4. For claim 3, the Opponent submitted as follows:[69]

   [69]  Ibid at paragraph 86, claim 3

3(i)	The system as claimed in claim 1 or 2 wherein the proximity sensor comprises anyone or a combination of the following:
3(ii)	an inductor component;	This is not expressly disclosed. However, the use of a proximity sensor is disclosed, and an inductor is a standard electrical component of a proximity sensor and a common component in many electrical circuits.
3(iii)	a capacitor component; and	As above
3(iv)	a proximity sensor component.	This is disclosed in [0019] and [0116]

1. I find the wording of this claim a bit odd.  A “proximity sensor component” is not defined in the specification.  I understand it to mean any component which is part of a proximity sensor, most likely different from an inductor or a capacitor component as it is listed separately.  Hence, any proximity sensor would at least have a proximity sensor component.  The claim requires any one of the components present.  Based on my understanding of the term, a “proximity sensor component” will be present in a proximity sensor, hence dependent claim 3 does not involve an inventive step in light of D7.

   Claims 4, 5, 6

2. The Opponent submitted that the additional features of these claims are disclosed in D7 as follows:[70]

   [70] Ibid at paragraph 86, claims 4, 5, 6

4(i)	The system as claimed in claim 1, 2 or 3, wherein the electronic tag comprises any one or a combination of the following:
4(ii)	a printed circuit board (PCB);	This is disclosed in [0074]: “a circuit board with a series of wire loops could be used”.
4(iii)	a processor;	This is disclosed in [0068] (“a microprocessor for processing data or other information”) and [0074](“a processing and/or memory device…a processor”)
4(iv)	a data storage utility;	This is disclosed in [0068] (“storage mediums for holding data” and [0074] (“storage device to process and store data”)
4(v)	a transceiver;	This is disclosed in [0068] (“a communication device 36 (eg. A transmitter and/or receiver)… These can be different components working together or they may be combined”)
4(vi)	an antenna	This is disclosed in [0074] (“an onboard antenna”)

5(i)	The system as claimed in claim 4, wherein the electronic tag comprises the transceiver,	This is disclosed in [0068] (“a communication device 36 (e.g. a transmitter and/or receiver) …These can be different components working together or they may be combined”.
5(ii)	and the transceiver comprises a radio frequency transceiver and/or a Bluetooth transceiver	This is disclosed in [0018] (“a device that communicates wirelessly using any of a variety of radio frequency protocols. The particular protocol may depend on the particular application and/or environment”).

6. The system as claimed in any preceding claim, wherein the electronic tag is encapsulated within a housing or encapsulating material. This is depicted in Figures 5, 5A, 16, 17, 18 and 27.

1. Both parties agree that these additional features are disclosed in D7. I too agree. Hence, I consider claims 4, 5, 6 to not involve an inventive step in light of D7.

   Claim 7

2. The Opponent submitted the following against inventive step of claim 7[71]:

   [71] Ibid at paragraph 86, claim 7

7(i)	The system as claimed in any preceding claim, wherein the receiver comprises a
7(ii)	PCB;	This is not expressly disclosed. However, the receiver (remote device (38)) includes many components (such as the processor (PC), database, transmitter/receiver identified in [69]) that the PSA would expect to use a PCB, such that the use of a PCB is both implicitly disclosed and obvious.
7(iii)	a processor;	This is disclosed in [0069] (“a remote device may include a processor”)
7(iv)	a transceiver and	This is disclosed in [0069] (“a remote device may include…a transmitter, receiver, etc”). The remote device performs both transmission and reception functions (see: [0070]).
7(v)	a data storage facility	This is disclosed in [0069] (“a remote device may include…a database”).

1. The only feature not explicitly disclosed in D7 is that the receiver comprises a PCB. The receiver of the remote device (38) has a processor (as per paragraph [0069]).  I agree with the Opponent that a PSA is expected to use a PCB in the processor as a matter of routine and hence, the mere presence of a PCB cannot provide an inventive step.  Hence, claim 7 lacks in inventive step in light of D7.

   Claims 8, 9, 10

2. The opponent submitted the disclosure of the additional features of these claims as follows:[72]

   [72] Ibid at paragraph 86, claims 8, 9, 10

8(i)	The system as claimed in claim 7 wherein the receiver further comprises a user interface comprising	This is depicted in Figure 11 as the HMI (11) which is described in detail in [0117]
8(ii)	a display screen to output	This is depicted in Figure 11 and disclosed in [0118] (“graphical display”).
8(iii)	the proximity data	The collection and transmission of proximity data has been addressed in the context of claim 1 above. [0115]-[0118] disclose that the proximity data is transmitted to, and output on, the display screen of the HMI.
8(iv)	or information based on the proximity data.	As above. Further, [0118] discloses the output of information based on proximity data (including “an indication that the [GET] may need maintenance”, the output of alerts, and historical charts).

9. The system as claimed in any preceding claim, wherein the mount region is a leading edge of an excavation bucket of an earth moving machine. This is depicted in Figures 2, 3, 8 and 9.

10(i)	The system as claimed in any preceding claim, wherein the GET further comprises any one or a combination of the following:
10(ii)	a temperature sensor	This is disclosed in [0019] (“the at least one monitoring device may include…temperature sensors”).
10(iii)	a GET wear status sensor;	This is disclosed in [0074] (“Other kinds of sensors e.g. ultrasonic could be used to measure the degree of wear or other desired characteristic of the GET”).
10(iv)	an accelerometer; and	This is disclosed in [0019] (“the at least one monitoring device may include…accelerometers”).
10(v)	a voltage sensor	This is not literally disclosed. However, [0074] discloses the use of “a metering device” which measures “the capacitance, resistance or other value”. The PSA would expect such a device to measure voltage response to a known current input (or vice versa), such that the use of a voltage sensor is both implicitly disclosed and obvious.

1. Both parties agree that all the additional features of claims 8 and 9 are disclosed in D7. I too agree.  With respect to dependent claim 10, it is of no consequence that “a voltage sensor” is not explicitly disclosed as other sensors are and the claim includes in its scope that the GET comprises only one of the recited sensors.  Hence, I consider dependent claim 10 is anticipated by D7.  Consequently, none of claims 8, 9 and 10 involve an inventive step when compared with D7.

   Claims 12, 13, 14

2. The Opponent submitted that the additional features of claims 12, 13 and 14 which are appended to independent claim 11 are disclosed in D7 as follows:[73]

   [73] Ibid at paragraph 88, claims 12, 13, 14

12. The method as claimed in
claim 11 further comprising
outputting at the receiver
the proximity data or
information based on the
proximity data. The collection and transmission of proximity data has been addressed in the context of claim 1 above.
[0115]-[0118] disclose that the proximity data is transmitted to, and output on, the display screen of the HMI.

13(i)	The method as claimed in claim 11 or 12, wherein: the electronic tag is configured to transmit tag ID data to the receiver
13(ii)	such that the electronic tag and the receiver are communication paired; and	It is disclosed in [0070] that the monitoring device (25) and remote device (38) “can be designed to community with each other in different ways and no one particular way is needed”. At the priority date, “communication pairing was a well established technique well known by those in the field”. The selection of that well known technique does not involve an inventive step.
13(iii)	in a normal use mode,	This is disclosed. The “normal use mode” is defined by integer 13(iv) (as to which, see below).
13(iv)	the receiver accepts exclusively transmission of proximity data from the electronic tag associated with the mining, earth moving or rock processing machine and not from non-associated electronic tags on different mining, earthmoving or rock processing machines.	This falls within the disclosure at [0070]. Further, [0071] discloses that it is optional, in implementing D7, whether “information may be shared with, i.e. sent to and received from, various other machines” and there are numerous passages where the remote device (38) is only disclosed to receive data from a single monitoring device (25) (see, for example, [0076] and Figure 12).

14. The method as claimed in
claim 11,12 or 13, wherein
the wireless communication
between the activator and the
electronic tag is UHF (radio
frequency) or Bluetooth
communication. This falls within [0018] (“communicates wirelessly using any of a variety of radio frequency procedures”) and [0070] (“communication may use various
communication protocols”).

1. There is no contention between the parties about the additional features of these claims being disclosed in D7.  I agree regarding claims 12 and 13.  With respect to claim 14, I consider that even though the additional feature is not disclosed in D7, a skilled person would as a matter of routine use one of these commonly known wireless communication techniques and arrive at the claimed invention.  Hence, I consider claims 12, 13 and 14 to not involve an inventive step in light of D7.

   Claim 15

2. In relation to dependent claim 15, the Opponent submitted[74]:

   [74]Ibid at paragraph 88, claim 15

15(i)	The method as claimed in any one of claims 11 to 14 wherein the step of activating the electronic tag comprises transferring activation data to the electronic tag, the activation data comprising any one or a combination of the following:	These features are not disclosed, because the use of an activator is not disclosed in D7. However, as set out in Part (d) above, it would have been obvious to a PSA, in light of the CGK at the Priority Date, to use an activator to implement the monitoring system (or method) disclosed in D7. This would have been a routine, and non-inventive, way of implementing that monitoring system (or method). Further, D7 does disclose the use of ID data (in [0068]: “tag ID”) and data concerning the position of the GET (in 0099]: “presence or absence of [the GET]”).
15(ii)	ID data relating to the GET, the environment within which the GET is to be operative and/or the machine to which the GET is mountable;
15(iii)	a position of the GET at the machine to which the GET is mounted;
15(iv)	communication parameter data to enable the electronic tag to communicate with the receiver; and
15(v)	configuration data to set a working configuration of the electronic tag.

1. As discussed under feature 1(xii), the activator to activate RFID tag is not disclosed in D7.  However, the feature was considered obvious for a skilled person in order to activate an active RFID tag.  The additional features in claim 15 relate to the method of activation of the tag which require transferring activation data which can be one or a combination of 15(ii) to 15(v).  Now, I turn to 15(v) that is ‘configuration data to set a working configuration of the electronic tag’.  This feature is so broad that I cannot see how else a skilled person trying to activate the tag using an activator would achieve the outcome.  The data (whatever data) transmitted by the activator must set the configuration of the electronic tag to make it work.  Hence, at least 15(v) would be an obvious step for a skilled person when using an activator to activate the RFID tag.  Hence, I do not consider claim 15 to involve an inventive step in light of D7.

   Claims 16, 17

2. The Opponent submitted that the additional features of claims 16 and 17 which are dependent on claim 11 are disclosed in D7 as follows:[75]

   [75] Ibid at paragraph 86, claims 16, 17

16(i)	The method as claimed in any one of claims 11 to15 further comprising providing at the GET any one or a combination of the following: • a temperature sensor; • a GET wear status sensor; • an accelerometer; and • a voltage sensor; and	The use of each of these sensors is disclosed in [0019] and [0074] or obvious, for the reasons set out in respect of claim 10 above.
16(ii)	sensing at the GET and transmitting to the receiver any one or a combination of the following: • a temperature of the GET; • a wear status of the GET; • an inclination/declination of the GET; • GET movement in a horizontal/vertical plane; • an acceleration/deceleration of the GET; • a tilt angle of the GET; • a strain or stress at the GET; • an impact status of a GET; and • a voltage at any one or a combination of the sensors.	This data is sensed at the GET by the aforementioned sensors in D7, and then transmitted to remote device (38). D7 discloses the sensing of temperature ([0019] & [0116]), wear status ([0066] & [0067]), inclination / declination ([0078] & [0116]), GET movement ([0012] & [0087]), acceleration/deceleration ([0019] & [0116]), tilt angle [0016], strain or stress ([0067] & [0069]), impact status ([0015], [0069] & [0081]), and voltage ([0074]; see further: integer 10(v) above).

17. The method as claimed in
any one of claims 11 to 16
further comprising outputting
the proximity data or
information based on the
proximity data to a network
or data storage utility via
wired or wireless
communication. This is disclosed in [0071]: “information may be shared with…various other machines including programmable logical, other networks…”.

1. Both parties agree that these features are disclosed in D7.  I too agree.  Hence, I consider claims 16 and 17 to not involve an inventive step in light of D7.

   Claim 18

2. The Opponent submitted that the additional features of claim 18 are disclosed in D7 or obvious:[76]

   [76] Ibid at paragraph 88, claim 18

18. The method as claimed in
any one of claims 11 to17
wherein, in response to a
mechanical detachment of the GET from the mount
region, the receiver is
configured to transmit to at
least one neighbouring
receivers in the same
working environment signal
to enable the neighbouring
receivers to receive and
process a signal transmitted
from the GET that is
detached. [0099] discloses the transmission of data as to the “presence or absence of [the GET] on the earth working equipment” and [0014]  discloses the transmission of data as to whether the GET has “unexpectedly been separated from the base”. [0071] discloses that such data may be transmitted to “various other machines” and “other networks”. It
follows that this feature is disclosed and/or obvious.

1. In paragraph [0071] of D7, it is disclosed that the information which may include presence (or absence) of GET may be shared with, i.e. sent to and received from, various other machines including programmable logic, other networks, and used with various software applications, and routines.  Even though, this shows that the information about the detachment of GET is transmitted to other machines, there is no disclosure at the cited paragraphs or elsewhere in D7 that a signal is transmitted to enable the neighbouring receivers to receive and process a signal transmitted from the detached GET.

2. I consider that sharing information about a lost GET with other machines (which is disclosed in D7) is different from enabling other receivers to be able to receive signals from the lost GET.  There is no evidence for me to conclude that a skilled person would find it obvious to move from the first arrangement to the second to achieve the claimed invention.  Consequently, claim 18 is inventive over D7.

   Claim 19

3. Claim 19 which is dependent upon claim 18 adds further features about configuration of receivers for communication.  Clearly, as a consequence of claim 18 being considered inventive, claim 19 is also inventive over D7.

   Inventive step- Conclusion

4. For the reasons set out above, I find claims 1-17 and 20 do not involve an inventive step in light of D7 together with the common general knowledge.  Based on the available evidence, I find claims 18 and 19 to be inventive over D7.

   Utility

5. s 18(1)(c) requires a claimed invention to be “useful”. The meaning of “useful” is found in s 7A, which was introduced with the RTB Act. s 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.” 

6. The insertion of s 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:[77]

   [77] The RTB EM at pages 44 to 45 (emphasis in original, footnotes removed)

   “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.’” 

7. Regarding the case law, Ranbaxy Australia Pty Ltd v WarnerLambert Co LLC[78] provides:  

   “141 Under ss 138 and 18(1)(c) of the 1990 Act, it is a ground of invalidity if the claimed invention is not useful ‘so far as claimed in any claim’.  If the claimed invention does what it is intended by the patentee to do and the end obtained is itself useful, the invention is useful within the meaning of s 18(1)(c).  As to the first aspect, the invention as claimed must attain the result promised by the patentee.  …”

   [78] [2008] FCAFC 82; (2008) 77 IPR 449 at [141] (“Ranbaxy”), emphasis added, references removed

8. In Artcraft Urban Group Pty Ltd v Streetworx Pty Ltd, Greenwood J, with the assent of Rares J, said:[79] 

   “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’.  What the invention is ‘intended’ to do is a matter to be gathered from ‘title and the whole of the specification’. 

   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.  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.” 

   [79] [2016] FCAFC 29 at [120]-[121] ("Artcraft”), Boldface emphasis added, references removed. 

9. However, there are limits to what constitutes “everything” within the scope of a claim.  Austal Ships[80] provides: 

   “Austal proposed a number of hull shapes for the purpose of establishing absence of utility.  The only ones that are relevant are those that fit within the requirements of claim 1 as I have construed it.  Further, I do not consider that lack of utility is established by a consideration of the characteristics of hull shapes that are totally impractical and contrived and would not be considered by any experienced or competent naval architect.  The claims are not directed to readers in a vacuum, they are directed to and are to be understood by the skilled workers in the field.  That is the person who construes them, in a commonsense way.  It would be artificial to assess utility in a way that ignores the fact that a design that is theoretically or mathematically within the parameters of the claims would never be contemplated for use by the skilled naval architect wishing to design a hull for a multi hulled vessel capable of speeds greater than 30 knots.  A design that no naval architect would adopt would not be the appropriate test on the question of utility.” 

   [80] Austal Ships Pty Ltd v Stena Rederi Aktiebolag [2005] FCA 805 at [240] (“Austral Ships”) 

10. Nor is it essential that every single integer of an invention be present in a claim should the absent integers be common general knowledge – Britax:[81]

    “553 The primary utility consideration is whether the invention as claimed will achieve the result promised by the specification, the result itself being useful.  However, it must be recognised that if the appropriately skilled addressee is able to supply an omitted feature, which is part of the common general knowledge, then provided the invention achieves the promise with that feature supplied, the claim will not lack utility.”

    [81] Britax Childcare Pty Ltd v Infa-Secure Pty Ltd (No 4) [2015] FCA 651; (2015) 113 IPR 280 (“Britax”)

11. The use of common general knowledge in assessing utility is also explained by Bennett J:

    “A principle has been expressed that all within the scope of a claim must be useful if the claim is not to fail for want of utility, so that a claim is bad if it covers something that will not produce the desired result, even if a skilled person would know which means to avoid it.  However, this principle does not mean that a specification should be construed in a way that any sensible person would appreciate would lead to unworkability when by construction it could be given a more limited meaning.  The claims should be construed as they would be by the person skilled in the art desirous of making use of the invention.  It has also been said that a claim does not need to specify a limitation that was common knowledge in the art for that limitation to apply in construing a claim to avoid want of utility.”[82] (references removed)

    [82] Inverness Medical Switzerland GmbH v MDS Diagnostics Pty Limited [2010] FCA 108 at paragraph [0117]

    The promise of the invention

12. The Opponent submitted that:

    the fundamental promise of the invention is to provide a system or method which enables “the active monitoring of the mechanical connection of a wear part of heavy machine so as to detect in real-time any loosening, partial or complete detachment of the wear part from its region of attachment”.  In this respect, the Application emphasises that the invention is to be distinguished from “existing GET detection systems” which are “limited to the detection of detached GETs”.  The Application emphasises that a difficulty, with such systems, is that “a GET embedded deeply within extracted bulk material may not be readily identifiable and may pass downstream”.  Thus, the invention promises that the system or method will monitor a “status of attachment” of GET and “output a status of attachment of the GET at the heavy machinery in real-time (i.e., as the machine is in use)” so as to alert personnel to the loosening / failure of a mechanical connection of the GET.[83] (references removed)

    [83] Opponent’s Written Submissions at paragraph 95

13. The Applicant criticised the Opponent’s characterisation of the ‘promise of the invention’ and submitted that:

    the Opposed Application states that one or more embodiments of the invention “may provide a monitoring system for monitoring a status of a … GET at a … machine configured to output a status of attachment of the GET … in real-time”.  It says that one or more embodiments “may provide a monitoring system that is sensitive to the attachment status of a GET…”.  It describes that the invention “may provide a system to avoid undesirable damage to the attachment mechanism of a GET and the unintentional GET detachment”.[84] (references removed)

    [84] Applicant’s Written Submissions at paragraph 103

14. The Applicant further submitted that:

    the Opposed Application states that the embodiments of the invention “may provide a system enabling the active monitoring of the mechanical connection of a wear part to heavy machinery so as to detect in real-time any loosening, partial or complete detachment of the wear part from its region of attachment”.  It describes that the embodiments of the invention “seek to avoid the disadvantages associated with such undesirable detachment”.[85] (references removed).

    [85] Ibid at paragraph 104

15. Finally, the Applicant stated that there is no promise that the invention will always be successful in monitoring the status of attachment of an item of GET at all times and under all operating conditions.[86]

    [86] Ibid at paragraph 105

16. I understand the Applicant’s criticism of the Opponent’s position.  On reading the whole specification, it is understood that the promised benefit is monitoring any loosening or detachment of GET from a mining machine.  The monitoring in “real-time” is explained in the application to mean monitoring as the machinery is in use.[87]  I do not see it to mean seamless, continuous monitoring, as the specification suggests that there could be multiple sensing events per millisecond, second or minute.[88]

    [87] Specification at page 3 lines 3-6

    [88] Ibid at page 26, lines 5-7

17. The Opponent further provided several reasons as to why the claimed invention does not attain the result promised.

18. Firstly, the Opponent submitted that the claimed invention encompasses the use of an electronic tag, proximity sensor and transmitter at the GET, without any limitation as to where or how these are provided at the GET.  The Opponent further submitted that it follows that the electronic tag, proximity sensor and transmitter may be (i) provided on the outside or inside of the GET and (ii) provided with or without any form of protection.  The Opponent then continued the argument submitting that if the electronic tag, proximity sensor and transmitter were located on an exposed, outer region of the GET (including, for example, a region making contacting with the ground or material being excavated), without any form of protection, then they would be immediately damaged in use, and the system would not work.

19. In support of this argument, the Opponent at the hearing, referred to a recent office decision- CQMS Pty Ltd v ESCO Group LLC[89] where the sensor was provided on a bucket and in the absence of any means of protection of the sensor defined in the claims, the delegate made a finding of those claims lacking utility.

    [89] [2024] APO 29 (“CQMS v ESCO”)

20. The Applicant highlighted that the CGK in the present application, included that RFID tags and the sensors could be embedded, attached or located within GET.  The Applicant also distinguished the present application from CQMS v ESCO by pointing to the fact that in that case, providing sensors on the bucket was not part of the CGK.  The Applicant submitted that the delegate could not import any form of sensor protection into the claim in that case.[90]  The Applicant further submitted that, in the present application, as the sensor, tag etc on GET is part of the CGK, there is no need to specify any limitation of where and how to provide these on the GET.

    [90] Ibid at paragraph 227

21. I agree with the Applicant.  Both these applications were considered in light of different CGK based on different evidence and their priority dates.  Hence, there is no basis to copy the finding of one into the other.  In the present application, there is no need to specify any sensor protection means in the claim.  Being part of CGK, such a feature can be supplied to the claim by the person skilled in art.

1. Secondly, the Opponent submitted that even if it is assumed that the invention, as claimed, is implemented by locating the electronic tag, proximity sensor and transmitter in a protected location, inside the GET, the claimed invention still would not work, because it fails to address the “obvious impediment” of “how to transmit the data” from the sensor to the receiver.[91]

   [91] Opponent’s Written Submissions at paragraph 103

2. Dr Hillier for the Opponent stated that:

   “The most obvious impediment to implementing the system in AU’503 is how to transmit the data from the sensor (17), located as shown in figure 2, to the receiver. The sensor is located inside the item of GET (which is a good position for protecting the sensor) and is surrounded by the metal of the item of GET, the neighbouring mounting region, shrouds, boss, mechanical attachment parts etc, effectively forming a Faraday cage which is very difficult to transmit radio signals through.”[92]

   [92] Hillier 1 declaration at paragraph 100

3. The Applicant objected to the Opponent’s assertion that the claimed invention would not work. Mr Javadi’s evidence in answer stated that:

   “the typical manner in which a GET is attached to a bucket or other part of machinery, such as shown in figure 2, results in gaps between the various compartments and in practice, there should not be an impediment to the transmission of signals.”[93]

   [93] Javadi declaration at paragraph 206

4. It appears that the impediment identified by Dr Hillier would be overcome by a PSA, equipped with CGK, desirous of making use of the invention. This is emphasised by Mr Javadi’s statement where a typical manner of implementing the invention would not face any impediment in signal transmission.

5. Thirdly, the Opponent submitted that:

   even if it is assumed that the invention, as claimed, is implemented (i) by locating the electronic tag, proximity sensor and transmitter in a protected location; and (ii) with the use of gaps to facilitate wireless transmission, the claimed invention still would not work, because it fails to address how wireless transmission enabling active monitoring in real time is to be achieved in circumstances where “the item of GET (and hence the sensor) would be buried under a large volume of material for a significant portion of time”. This would have the effect of “further increasing the difficulty in detecting a signal at the receiver from the tag”.[94]

   [94] Opponent’s Written Submissions at paragraph 108

6. In response, the Applicant submitted, referring to Mr Javadi’s evidence that when Sandvik implemented the invention claimed in the application, it did not encounter any difficulties with implementation.

7. I note that as per paragraph 111 above, that continuous monitoring is not required for the claimed invention to meet its promised benefit. It seems that the difficulty asserted by the Opponent is based on the requirement which does not exist.

   Utility- conclusion

8. Based on the above considerations, I am satisfied that the claims meet their promised benefits. I therefore find that the claims have utility.

   Sufficiency and Support

9. s 40(2)(a) as amended by the Raising the Bar Act requires that the claimed invention be described in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art.  This requires that the specification provide sufficient information to enable the skilled person to perform the invention across the scope of the claims without undue burden or the need for further invention.[95]  s 40(3) as amended by the Raising the Bar 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”.[96]  The requirement in s 40(2)(a) of the Act is referred to as the sufficiency obligation or enablement requirement whilst the requirement in s 40(3) of the Act is referred to as the support requirement.  As Burley J has observed in Merck Sharp & Dohme Corporation v Wyeth LLC (No 3), ‘they may often be viewed as two sides of the same coin.’[97] 

   [95] The RTB EM, pages 46-48

   [96] EXXON/Fuel Oils (T409/91) [1994]

   [97] [2020] FCA 1477; 155 IPR 1 at [543]

10. The principles of sufficiency as applied by the delegate in CSR,[98] and later endorsed by Burley J in Cytec Industries Inc. v Nalco Company[99], wherein a three-step approach was taken to determine whether the specification provided a disclosure as required by s 40(2), 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 things that fall within the scope of the claims.

    [98] CSR Building Products Limited v United States Gypsum Company [2015] APO 72

    [99] [2021] FCA 970

11. Burley J explored the requirement of support in Merck Sharp at [546]-[547]:
    
    

    “In CSR Building Products Ltd v United States Gypsum Company [2015] APO 72, Dr S D Barker adopted the summary provided by Aldous J in Schering Biotech at 252 – 253, which has been often followed in the United Kingdom (emphasis added):

    ...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.

    That approach encapsulates broadly the claim support obligation under s 40(3). To it may

    be added the requirement that the technical contribution to the art must be ascertained.

    Where it is a product, it is that which must be supported in the sense that the technical

    contribution to the art disclosed by the specification must justify the breadth of the

    monopoly claimed.”

12. The Opponent effectively raised analogous arguments for why the application lacks sufficiency/enablement and support.  At the hearing, the Opponent also accepted the interrelationship between a number of utility and best method issues and the support and sufficiency issues.

    No limitation as to where and how the electronic tag, proximity sensor and transmitter are provided at GET

13. The first point of attack used by the Opponent under the grounds of sufficiency and support is same as that under utility which is the invention as claimed, encompasses the use of an electronic tag, proximity sensor and transmitter at the GET, without any limitation as to where or how that electronic tag, proximity sensor and transmitter is to be provided at GET.  The Opponent argued that the electronic tag, proximity sensor and transmitter may be provided on the outside of the GET, the front, back or side of the GET, and without any form of protection.  The Opponent further submitted that the location of the electronic tag, proximity sensor and transmitter at the GET enables the system to monitor a “status of attachment”, which is the essence or core of the invention.

14. As discussed under the ground of utility, the CGK at the priority date included the presence of the RFID tag, proximity sensor etc at the GET.  Hence, I do not consider that the location of these elements is the essence of the invention or require any inventive ingenuity.

15. I am satisfied that the specification provides sufficient guidance to facilitate placement of sensor, RFID tag, transmitter on the GET and a skilled person would not be required to undertake prolonged research and experimentation that would be considered undue effort in the field. Hence, the specification is clear enough and complete enough with respect to placing proximity sensor and RFID tag by a person skilled in the art.

16. Analogously, the Opponent submitted that the only disclosure pertaining to the location of the electronic tag and proximity sensor is in Figure 2.  The claims, however, are not limited by such a placement and hence, they are broader than justified.

17. I consider Figure 2 to be an illustration only and given the placement of these elements on GET is part of CGK, I do not consider such a placement to be providing any technical contribution to the art.

18. On understanding the complete specification and considering the evidence provided, I am of the view that the technical contribution of the claimed invention is not within any specific placement of proximity sensor, RFID tag on the GET.  The technical contribution is in using a proximity sensor to monitor the “status of attachment” of a GET. Hence, the breadth of the claims is justified by the technical contribution.  It follows that the claims are supported.

    Claims encompass the use of monitoring system, in which there is a tight fit between the components and there are no gaps or clearances

19. The Opponent further raised that the claims encompass the use of a monitoring system, in which there is a tight fit between the components and there are no gaps or clearances.  However, the evidence of Mr Javadi is that such gaps or clearances are essential, to allow for wireless transmission. It follows that the specification fails to disclose how to perform the invention “across the whole of that range without inventive skill or undue burden”.[100]

    [100] Opponent’s Written Submissions at paragraph 136

20. The Applicant submitted that the Opponent proceeded on a misapprehension and the evidence does not establish that gaps or clearances are essential, to allow for wireless transmission.[101]  The Applicant further referred to Mr Javadi’s evidence as follows:

    “I observe that it [is] usual in equipment of the type as shown in figure 2 of AU 503 having a GET 14 mounted to a bucket lip 15 for there to be gaps or clearances around these components.  There is not a tight fit between the components.  In the invention, these gaps allow the wireless transmission of data from the transmitter at the GET to the receiver. During the development and testing of the invention, Sandvik found that even when these gaps had been filled with dirt because of a mining operation, there was still a transmission of the data.  Thus, Sandvik was able to implement the monitoring system on its mining equipment without difficulty”[102] (my bolding)

    [101] Applicant’s Written Submissions at paragraph 130

    [102] Javadi declaration at paragraph 199

21. I understand that the evidence refers to the usual or known way of mounting these elements on GET.  As this is part of CGK, a skilled person, would not require any further disclosure.

22. I am not satisfied that the Opponent has demonstrated that the specification lacks clear and complete disclosure, or the claims are broader in scope than justified.

    Sufficiency and Support- conclusion

23. I am satisfied that the specification provides sufficient information to enable the skilled person to perform the invention across the scope of the claims and claims are supported by matter disclosed in the specification.  The Opponent has been unsuccessful in making out these grounds of opposition.

    Best Method

24. The requirement that an application disclose the best method of performing the invention is given at s 40(2)(aa) of the Act, which reads as follows:

    “(2) A complete specification must: 

    …(aa) disclose the best method known to the applicant of performing the invention;…” 

25. The requirement to provide the best method was present in the Act prior to the RTB legislation, although it was incorporated with considerations of sufficiency under s40(2)(a).  The RTB legislation carved off best method from s40(2)(a) into new s40(2)(aa).  The consideration of best method is otherwise the same pre and post RTB, as is clear from item 8 of the RTB EM.

26. Beach J explained the requirements of best method :

    “A patent will satisfy the best method requirement if the skilled addressee can arrive at the best method known to the patent applicant of performing the invention by some routine experimentation, but without ingenuity or undue experimentation.  A patent applicant does not need to disclose details of the method which would be well-known and understood by the skilled addressee such as well-known analytical agents, commonly used methods, well-known terms of art, or a description of machinery in standard use.”[103]

    [103] Bluescope Steel Limited v Dongkuk Steel Mill Co., Ltd (No 2) [2019] FCA 2117; 152 IPR 195 at [836]

27. In Kineta, Inc. [2017] APO 45, the Deputy Commissioner canvassed some of the relevant case law on best method, including Les Laboratoires Servier v Apotex Pty Ltd [2016] FCAFC 27; 117 IPR 415 and Expo-Net Danmark A/S v Buono-Net Australia Pty Ltd (No 2) [2011] FCA 710. After doing so the Deputy Commissioner posed a test for the best method requirement at [29] as follows:

    “It is clear that I need to consider three matters: 

    1.what is the invention for which a best method must be provided; 

    2.what method is described in the specification; and 

    3.was the applicant aware of a better method?” 

    The Opponent’s Best Method Arguments

28. At the hearing, the Applicant submitted that the ground of best method as pleaded by the Opponent in their submissions and at the hearing is very different to what was advanced in the SG&P.

29. I informed both parties at the hearing, that if I consider this ground relevant, I would write to them and seek their further submissions.  I note that the Opponent first advanced this particular case in their written submissions, which may not have given the Applicant sufficient time to respond.  Hence, there is prejudice against the Applicant, should this ground be made out without giving the Applicant sufficient opportunity to provide their submissions.

30. The Opponent advanced this ground mainly on two aspects from Mr Javadi’s evidence:[104]

    ·There is no disclosure of how to utilise gaps or clearances around these components, namely GET and bucket lip.

    ·There is no disclosure of gaps between the earth particles, so that the earth did not impede the signal transmission.

    [104] Opponent’s Written Submissions at paragraph 115

31. I have reproduced Mr Javadi’s evidence that the Opponent relied on below:

    “I observe that it is usual in equipment of the type as shown in figure 2 of AU 503 having a GET 14 mounted to a bucket lip 15 for there to be gaps or clearances around these components.  There is not a tight fit between the components.  In the invention, these gaps allow the wireless transmission of data from the transmitter at the GET to the receiver.  During the development and testing of the invention, Sandvik found that even when these gaps had been filled with dirt because of a mining operation, there was still a transmission of the data.  Thus, Sandvik was able to implement the monitoring system on its mining equipment without difficulty.”[105] (my emphasis)

    “I have previously addressed the concern raised by Mr Hillier in (100). The typical manner in which a GET is attached to a bucket or other part of machinery, such as shown in figure 2 of AU 503, results in gaps between the various components and in practice, there should not be an impediment to the transmission of signals.  When a bucket is filled with earth, the GET is not covered with earth and so a problem does not arise at this stage.  Further, when testing the invention Sandvik found no difficulty with the transmission of data including when the bucket was in the process of digging and filling with earth.  I note that there are typically gaps between the earth particles, especially if the material is rocky, so that the earth did not impede the signal transmission.”[106] (my emphasis)

    [105] Javadi declaration at paragraph 199

    [106] Ibid at paragraph 206

32. The Applicant submitted that Mr Javadi’s evidence did not reveal that any development or testing conducted by Sandvik revealed “a need to ensure gaps or clearances to “allow wireless transmission”” or that “the system, method or GET should be used where “the material is rocky””.[107]

    [107] Applicant’s Written Submissions at paragraph 118

33. I agree with the Applicant that a careful consideration of Mr Javadi’s evidence does not indicate that the Applicant was aware of any unusual or special means of carrying out the invention, to achieve the best result.  The evidence simply refers to the usual and typical manner in which items of GET are mounted, and explains that Sandvik’s implementation, which was consistent with this approach, did not reveal any difficulties in the implementation of its monitoring system.[108]

    [108] Ibid at paragraph 118

34. The failure to provide any further reasoning or evidence amounts to a failure by the Opponent to discharge its onus.  Hence, I did not consider it necessary to write to parties to gain further submissions (especially from the Applicant), as there was no evidence pointing to the Applicant being aware of a better method at the time of filing.

    Best Method – Conclusion 

35. I am not satisfied that the specification fails to comply with the need to supply the best method as per s 40(2)(aa).  The Opponent has been unsuccessful in making out this ground of opposition. 

    Conclusion

36. The opposition is successful on the ground of inventive step.  Claims 1-17 and 20 are not inventive.  The opposition fails on all other grounds.

37. I will allow the Applicant two (2) months from the date of this decision to propose amendments overcoming the deficiencies identified in this decision.

    Costs

38. It is normal that cost should follow the event.  I find no reason to depart from that approach.  I will award costs against the Applicant according to Schedule 8.

    Pradnya Satarkar

    Delegate of the Commissioner of Patents

    Annex A

    1. A monitoring system for monitoring a status of attachment of a ground engaging tool (GET) at a mining, earth moving or rock processing machine, the system comprising:

    at least one GET detachably mountable at a mount region of a mining, earth moving or rock processing machine, said GET comprising an electronic tag;
               at least one proximity sensor provided at the GET and configured to sense a proximity of the GET relative to the mount region of the mining, earth moving or rock processing machine to which the GET is mountable, the proximity sensor being provided at the electronic tag; and
               a transmitter provided at the GET to transmit wirelessly proximity data to a receiver located remote from the GET; and
               an activator having a printed circuit board (PCB), a processor and a transceiver, the activator being configured for wireless communication with the electronic tag.

    2. The system as claimed in claim 1 wherein the GET comprises a first part of a mechanical connection and the mount region comprises a second part of the mechanical connection, the GET capable of being detachably mounted at the mount region via a mating of the first part and the second part.

    3. The system as claimed in claim 1 or 2 wherein the proximity sensor comprises any one or a combination of the following:

    • an inductor component;

    • a capacitor component; and

    • a proximity sensor component.

    4. The system as claimed in claim 1, 2 or 3, wherein the electronic tag comprises any one or a combination of the following:

    • a printed circuit board (PCB);

    • a processor;

    • a data storage utility;

    • a transceiver; and

    • an antenna.

    5. The system as claimed in claim 4, wherein the electronic tag comprises the transceiver, and the transceiver comprises a radio frequency transceiver and/or a Bluetooth transceiver.

    6. The system as claimed in any preceding claim, wherein the electronic tag is encapsulated within a housing or encapsulating material.

    7. The system as claimed in any preceding claim, wherein the receiver comprises a PCB, a processor, a transceiver and a data storage utility.

    8. The system as claimed in claim 7 wherein the receiver further comprises a user interface comprising a display screen to output the proximity data or information based on the proximity data.

    9. The system as claimed in any preceding claim wherein the mount region is a leading edge of an excavation bucket of an earth moving machine.

    10. The system as claimed in any preceding claim wherein the GET further comprises any one or a combination of the following:

    • a temperature sensor;

    • a GET wear status sensor;

    • an accelerometer; and

    • a voltage sensor.

    11. A method of monitoring a status of attachment of a ground engaging tool (GET) at a mining, earth moving or rock processing machine, the method comprising:

    providing an electronic tag mounted to a GET detachably mountable at the mining, earth moving or rock processing machine;

    providing a proximity sensor at the GET, said proximity sensor being provided at the electronic tag;

    sensing the proximity of the GET relative to a mount region of the mining, earth moving or rock processing machine to which GET is mounted;

    transmitting wirelessly proximity data generated by the sensor to a receiver located remote from the GET; and

    storing, outputting and/or processing the proximity data at the receiver to monitor the attachment status of the GET based on the proximity data; and

    prior to generating the proximity data, activating the electronic tag using an activator configured for wireless communication with the electronic tag.

    12. The method as claimed in claim 11 further comprising outputting at the receiver the proximity data or information based on the proximity data.

    13. The method as claimed in claim 11 or 12, wherein: the electronic tag is configured to transmit tag ID data to the receiver such that the electronic tag and the receiver are communication paired; and in a normal use mode, the receiver accepts exclusively transmission of proximity data from the electronic tag associated with the mining, earth moving or rock processing machine and not from non-associated electronic tags on different mining, earth moving or rock processing machines.

    14. The method as claimed in claim 11, 12 or 13, wherein the wireless communication between the activator and the electronic tag is UHF (radio frequency) or Bluetooth communication.

    15. The method as claimed in any one of claims 11 to 14 wherein the step of activating the electronic tag comprises transferring activation data to the electronic tag, the activation data comprising any one or a combination of the following:

    • ID data relating to the GET, the environment within which the GET is to be operative and/or the machine to which the GET is mountable;

    • a position of the GET at the machine to which the GET is mounted;

    • communication parameter data to enable the electronic tag to communicate with the receiver; and

    • configuration data to set a working configuration of the electronic tag.

    16. The method as claimed in any one of claims 11 to 15 further comprising providing at the GET any one or a combination of the following:

    • a temperature sensor;

    • a GET wear status sensor;

    • an accelerometer; and

    • a voltage sensor; and sensing at the GET and transmitting to the receiver any one or a combination of the following:

    • a temperature of the GET;

    • a wear status of the GET;

    • an inclination/declination of the GET;

    • GET movement in a horizontal/vertical plane;

    • an acceleration/deceleration of the GET;

    • a tilt angle of the GET;

    • a strain or stress at the GET;

    • an impact status of a GET; and

    • a voltage at any one or a combination of the sensors.

    17. The method as claimed in anyone of claims 11 to 16 further comprising outputting the proximity data or information based on the proximity data to a network or data storage utility via wired or wireless communication.

    18. The method as claimed in any one of claims 11 to 17 wherein, in response to a mechanical detachment of the GET from the mount region, the receiver is configured to transmit to at least one neighbouring receivers in the same working environment a signal to enable the neighbouring receivers to receive and process a signal transmitted from the GET that is detached.

    19. The method as claimed in claim 18 wherein the neighbouring receivers are configured to communicate with the receiver of the machine from which the GET has been detached and to notify the receiver when a signal has been received from the detached GET.

    20. A ground engaging tool (GET) mountable at a mining, earth moving or rock processing machine, the GET comprising:

    a main body having a ground engaging region to engage the ground and an attachment region to attach the GET at a mining, earth moving or rock processing machine;

    an RFID tag attached to the GET, the RFID tag comprising:

    • a printed circuit board (PCB);

    • a processor;

    • an antenna;

    • a battery; and 

    • at least one sensor comprising a proximity sensor to sense a proximity of the GET relative to a region of the mining, earth moving or rock processing machine to which the GET is mountable; wherein the RFID tag is configured to be activated wirelessly using an activator configured for wireless communication with the RFID tag.