Devico As v Huygens As - [2022] APO 71

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Devico AS v Huygens AS [2022] APO 71
Patent Application: 2015302416

Title:System and method for position and orientation detection of a downhole device

Patent Applicant: Huygens AS

Opponent:Devico AS

Delegate:R Subbarayan

Decision Date: 24 October 2022

Hearing Date: 29 June 2022, in Video Conference

Catchwords: PATENTS – section 59 – opposition to grant of patent – whether claims are novel – whether claims are inventive – none of the grounds made out – application to proceed to grant

Representation: Solicitor for the applicant: Matthew Swinn of King & Wood Mallesons
Patent attorney for the applicant: AJ Park
Patent attorney for the opponent: Collison & Co

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2015302416

Title:System and method for position and orientation detection of a downhole device

Patent Applicant: Huygens AS
Date of Decision: 24 October 2022
DECISION
The opposition is unsuccessful as none of the grounds have been made out.
Subject to appeal, the application should proceed to grant.

I award costs against the applicant according to Schedule 8 of the Regulations up to the date the amendments dated 17 September 2021were allowed, namely 12 January 2022, and from 12 January 2022 I award costs against the opponent according to Schedule 8 of the Regulations.
REASONS FOR DECISION
BACKGROUND

Patent application 2015302416 currently in the name of Huygens AS (the “applicant”) was filed as a PCT application on 14 August 2015 and claims an earliest priority date of 14 August 2014. It entered the national phase in Australia on 1 February 2017. Following examination, it was advertised on 20 August 2020 as having been accepted. A notice of opposition to the grant of the patent was filed on 18 November 2020 by Devico AS (the “opponent”).
The opponent’s evidence in support was filed on 18 May 2021.
The applicant’s evidence in answer was filed on 18 August 2021.
On the same day, the applicant also filed a statement of proposed amendments comprising amendments to the claims.
As these proposed amendments were found by the examiner to be not allowable, the applicant filed a further set of proposed amendments to the claims on 17 September 2021. These amendments were found to be allowable and advertised as such on 27 January 2022.
The opposition was heard on 29 June 2022. The opponent appeared only through written submissions whereas the applicant appeared by video conference.
GROUNDS OF OPPOSITION
The Statement of Grounds and Particulars filed by the opponent lists the grounds of opposition as entitlement, manner of manufacture, novelty, inventive step, sufficiency of disclosure, clarity and utility. However, the written submissions filed for the hearing only presses the grounds of novelty and inventive step.
EVIDENCE FILED
Both parties have filed evidence from experts in the field of the invention.
Evidence in support from the opponent comprises a declaration from Mr Michael Ayris dated 18 May 2021 with exhibits MA-01 to MA-02.
Evidence in answer from the applicant comprises a declaration from Dr Jonathan Tapson dated 17 August 2021 with exhibits JT-01 to JT-02.
There was no evidence in reply filed.
THE INVENTION
The present invention relates to a system and method for identifying or monitoring the orientation and position of a downhole drilling device such as a directional core barrel drill.
Under the heading “Background for the Invention”, the specification notes that there are several ways of identifying and monitoring the orientation and position of a downhole body that are known in the art. One example is the Universal Bottom Hole Orientation (UBHO) sub or mule shoe sub in which an electronic survey unit is connected to the sub which is then pumped down the drill rods and then locked onto the body that needs to be orientated. A second example mentioned is patent US4094360 which discloses a mule shoe which is retrievable making it advantageous over stationary orientation systems. The specification notes that retrievability is “essential for operating for example directional core barrels, wedges and other tools where the orientation unit may need to be taken to surface”[1].
[1] Specification at page 1, lines 26-27
The use of a mule shoe is however stated to have certain drawbacks such as requiring significant axial force for effecting connection of the shoe, the mule shoe can only be connected to a body in one specific position and the locking coupling that is required between the drive shaft and the outer body of the drill can malfunction and be difficult to operate at greater depths[2].
[2] Specification at page 1, line 28 – page 2, line 6
The specification also makes reference to US 2009/0056938 which relates to estimating the orientation of a liner conveyed in a wellbore and then deploying the liner based on the orientation.
The specification therefore addresses a need for an orientation system that:
·does not require a mule shoe;
·can sense the position of a point on the outer body of a device with respect to gravity, independent of the position of the point on the peripheral surface of the outer body;
·does not need a locking ring or coupling between the drive shaft and the outer body of the drill;
·can be brought to the surface for servicing and for downloading data.
The principle of the present invention is then stated to be as follows.
“The main principle of the present invention is to provide an alternative orientation system that does not need the UBHO (muleshoe), for determining the circumferential position of a reference point on an outer body of a device at any time or at certain periods in time, and to collect such information, so that the position of a device can be determined and/or calculated”[3].
[3] Specification at page 2, line 35 – page 3, line 4
The present invention provides for an orientation unit for a downhole drilling device that includes a reference point member positioned on an outer element that is fixed in relation to the drilling device and sensing devices positioned within an inner element on the drilling device for detecting the position of the reference point member at any point in time and for sensing the earth’s gravity. A processing unit receives data from these sensing devices to estimate the orientation of the drilling device and to then also control a deflection mechanism for changing the direction of drilling if required.
Preferred embodiments of the invention are described with reference to figures 1-6 of which figures 1 and 3 are reproduced below.
Figure 3 shows a directional core barrel drill device with an orientation unit 10 according to the present invention. It has a drill bit 22 connected to an internally arranged drive shaft (not shown) and a rod coupling 25 for connecting the drive shaft to a drill string (not shown), transferring rotation to the drive shaft and the drill bit 22.
Figure 1 shows the orientation unit 10 in greater detail. It comprises an outer element 11 and an inner element 12. The outer element is a cylindrical member that is held fixed during a drilling operation by means of packer 24. It is provided with a reference point member in the form of a magnet 13. The inner element is positioned within the outer element and is rotationally fixed on the drill device. It includes a magnetic field sensor 15 and a gravity sensor 16 that are positioned within the inner element on the centre axis 14. This centrical positioning allows the magnetic field sensor to detect the position of the reference point member at any time. The magnetic field sensor may be a magnetometer or a hall effect sensor. The gravity sensor may be an accelerometer. A processor 32 receives data from both sensors and calculates the rotational position of the reference point member with reference to gravity thereby providing the orientation of the drill device and this information is then used by a deflection mechanism to control the direction of drilling. The inner element alone with the sensors and processor can be retrieved to the surface either for downloading data from the sensors or for inspection and servicing of the sensors.
The specification notes some of the advantages of the present invention.
“It should be appreciated that the system does not depend on a locking mechanism or coupling between the drive shaft and the body of the device if used on for example a drill with an independently running internal drive shaft. Moreover the sensing devices and electronics can be removed and brought to surface, leaving only the relatively low cost reference point member downhole”[4].
[4] Specification at page 4, lines 13-17
The applicant has also noted in their submissions that the centric positioning of the magnetic sensor allows the magnetic sensor to detect the position of the reference point member at any time as the relative position of the sensor to the reference point does not change during rotation of the drilling device.
The specification as accepted had 13 claims but as noted earlier, these claims were amended during the course of this opposition. The amended claims also comprise 13 claims of which independent claims 1 and 9 read as follows:
1. A system for identifying or monitoring the orientation and position of a downhole drilling device being a directional core barrel drill comprising a drill bit connected to one end of an internally arranged drive shaft, the other end of the internally arranged drive shaft being provided with a rod coupling for connecting the drive shaft to a drill string to transfer rotation of the drill string to the drive shaft and drill bit, the directional core barrel drill further comprising a deflection mechanism for changing the direction of drilling the system comprising:
a. an orientation unit comprising an outer body element and an inner body element arranged inside the outer body element; and
b. a packer for holding the outer body element of the orientation unit fixed during a drilling operation;
wherein the orientation unit includes a reference point member connected to the outer body element
wherein
- the inner body element is retrievable, and
- the inner body element is fully or partially enclosing at least a first and second detector, the first detector is essentially centrically positioned with respect to the inner element and at any time sensing, directly or indirectly, the rotational position of the reference point member, the second detector sensing earth gravity,
the system further including:
- a processor adapted to retrieve collected data from said first detector and said second detector, using said data for calculating and determining the rotational orientation of the fixed reference point member relative to earth gravity, and
- a device(s) for using data provided by the processor as input to identify, control and/or adjust the position of the deflection mechanism of the downhole drilling device.
9. A method for identifying or monitoring the orientation and position of a downhole drilling device, being a directional core barrel drill comprising a drill bit connected to one end of an internally arranged drive shaft, the other end of the internally arranged drive shaft being provided with a rod coupling for connecting the drive shaft to a drill string to transfer rotation of the drill string to the drive shaft and drill bit, the directional core barrel drill further comprising a deflection mechanism for changing the direction of drilling, wherein the method uses an orientation unit comprising an outer body element and an inner body element arranged inside the outer body element, and a packer for holding the outer body element of the orientation unit fixed during a drilling operation, the inner body element being retrievable;
the method comprising the following steps:
- establishing a fixed reference point member on the outer body element;
- arranging at least one first detector, and at least one second detector in the inner body element, such that the inner body element fully or partially enclosing the first and second detector, such that the first detector is essentially centrically positioned with respect to the inner element;
- using at least one first detector to at any time sense the position of the fixed reference point member;
- using at least one second detector for sensing earth gravity;
- connecting the output from at least one first detector and the at least one second detector with a processor or (sic) retrieving collected data from said at least one first detector and said at least one second detector, using such data from said at least one first detector and said at least one second detector for calculating and determining the rotational orientation of the fixed reference point member; and
- using data provided by the processor to identify, control and/or adjust the position of the deflection mechanism of the downhole drilling device.
CLAIM CONSTRUCTION
The approach to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70, 81 IPR 228 at [118] – [120]:
“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”
While the opponent did not raise any issues of claim construction, there a couple of terms in the claims that I will construe before I consider the grounds of Novelty and Inventive Step.
The inner body element is retrievable
The claims define that the orientation unit comprises an outer body element and an inner
body element arranged inside the outer body element and that the inner body element is retrievable.
When I construe this definition of the inner body element as being retrievable in light of the specification as a whole, it is clear that this definition is to be interpreted to mean that the inner body element alone can be removed from the rest of the orientation unit and the drilling device and brought to the surface. While the inner body element would also be retrieved when the drilling device is retrieved from the downhole, in my view the definition of the inner element per se as being retrievable rather than the entire orientation unit or the drilling device clearly indicates that the inner body element alone can be retrieved to the surface. This construction is also consistent with the disclosure in the body of the specification[5].
[5] Specification at page 12, line 34 – page 13, line 8
Centrically positioned with respect to the inner element
Claim 1 defines that the first detector is “centrically positioned with respect to the inner element”.
At the hearing the applicant submitted that this is to be construed as being positioned at the centre axis of the inner body element allowing the detector to sense the position of the reference point at all times as the relative positioning of the detector to the reference point remains the same even during rotation of the drilling device. This construction is also consistent with the embodiment shown in figure 1 where the magnetic detector 15 is positioned along the centreline 14. Both the experts also appear to have adopted this construction. This is the construction that I will also therefore adopt.
NOVELTY
The general test for lack of novelty is the reverse infringement test as given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20], 137 CLR 228 at 235:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement”.
This test is satisfied if the alleged anticipation discloses all the essential features of the invention as claimed (see Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40; (1990) 91 ALR 513 at 517). In order to meet this requirement, the prior art must “contain clear and unmistakeable directions to do what the patentee claims to have invented” (The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 at 486).
In AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99, the full Federal Court held at [302]:

“Sufficiency of disclosure is a cardinal anterior requirement in the analysis of whether a prior art document anticipates a claimed invention. It is only after the stage of assessing the sufficiency of disclosure which involves a determination about whether a prior document has ‘planted the flag’ as opposed to having provided merely ‘a signpost, however clear, upon the road’ or, perhaps, something less that the notion of reverse infringement comes into play as the final and resolving step of the required analysis. It is not the first step of the required analysis; nor is it the only step”.
(D3) US 2009/0056938 Al
This is the only document that the opponent has relied on under this ground.
D3 is titled “Apparatus and Method for estimating orientation of a Liner during drilling of a Wellbore”.
It relates to an apparatus for estimating the orientation of a liner which is placed outside the drill string during drilling of a well bore and set in the well bore when the drilling assembly is retrieved after drilling the wellbore. The invention notes that liners are often provided with features such as windows for drilling lateral wellbores before they are deployed in the wellbore. While the orientation of these features relative to the drilling assembly is known before deployment of the liner with the drilling assembly, the relative position could change during drilling due to various forces and hence it is important to be able to estimate the orientation of the liner with respect to the drilling assembly during the drilling operation. The invention of D3 provides an apparatus for estimating this orientation.
The invention is best understood with reference to figures 1 and 2 that are reproduced below.
The drilling system of figure 1 shows a wellbore being formed by a drill string 118. The drill string 118 includes a drilling assembly 130 that is connected to a drilling tubular 116 by a coupler 118a. The liner 120 that is to be deployed in the wellbore is suspended in the wellbore 110 via a liner hanger 122 that allows the drill string 118 to pass therethrough. The liner is also detachably coupled to the drilling tubular 116 at a suitable location by a connector 123. It is provided with one or more features 162, the orientation of which needs to be determined during drilling. This is done using a sensor arrangement.
Figure 2 is a schematic diagram showing a liner placed outside a portion of the drilling assembly and a sensor arrangement that may be utilized for estimating the orientation of a feature 263 of the liner. The description of the sensor arrangement is easily understood from the following passages that I have reproduced below.
“[0019] FIG. 2 shows a schematic diagram of an exemplary system 200 containing a drilling assembly 130 with a liner 120 placed around a portion of the drilling assembly. A sensor arrangement or device 260 (also referred to herein as the ‘liner orientation sensor’ or ‘sensor’) associated with the drilling assembly 130 and the liner 120 may be utilized for estimating the orientation of a feature 263 in the liner 120 when the liner is in the wellbore 110. The drilling assembly 130 may further include a steering device or mechanism 220 above the pilot drill bit 150. In one aspect, the steering device 220 may be a closed-loop device or system, which contains a plurality (generally three or more) of independently-controlled force application members, such as members 224a, 224b, etc. Each force application member is configured to apply a desired amount of force on the wellbore wall to steer the pilot bit 150 in a desired direction”.
“[0024] The system 200 further may include a liner orientation sensor (or sensor) 260. The sensor 260 is shown to include a sensed element (or first element) 265 associated with or carried by the liner 120 and a sensing element (or second element) 266 carried by the drilling assembly 130. In one aspect, the liner orientation sensor 260 may be placed proximate the feature, such as feature 263 shown in FIG. 2. Any suitable sensor arrangement may be utilized to determine the orientation or relative location of the feature 263 with respect to a location of a known element on the drilling assembly 130, such as the location of the sensing element 266 or another marker associated with the drilling assembly 130 or the drill string 118. In one configuration, the liner orientation sensor 260 may include a coil carried by the drilling assembly 130 as the sensing element 266 configured to sense a magnetic field from a magnet (the sensed element 265) placed on the liner 120. In another aspect, the liner orientation sensor 260 may comprise a coded magnetic field as the sensed element 265 on the liner 120 and a coil or detector as the sensing element 266 that senses changes in the coded magnetic field due to changes in the orientation or displacement of the liner 120. Electrical sensors, acoustic sensors, photoacoustic sensors, etc. also may be utilized for determining the liner orientation. The term movement herein comprises the term displacement.
[0025] In operation, the liner orientation sensor 260 provides signals representative of the movement or displacement of the feature 263. The position sensors 248 provide signals relating to the orientation of the drilling assembly 130. In one aspect, the controller 170 may be configured to process signals from the liner orientation sensor 260 and the position sensors 248 to estimate the orientation of the liner and correlate the determined liner orientation with the orientation of the drilling assembly 130. Alternatively, signals or processed signals from the liner orientation sensor 260 and/or the position sensors 248 may be sent to the surface controller 190 for estimating the orientation of the feature 263. Also, both the surface controller 190 and the downhole controller 170 may cooperate to determine the feature orientation. The determined feature orientation may be displayed for use by an operator. The operator may rotate the liner 130 from the surface to align the feature 263 along the desired orientation before setting the liner 130 in the wellbore 110. The terms estimate and determine are used as synonyms”.

Although the opponent has submitted that the independent claims lack novelty over D3 relying on the evidence of Mr Ayris in which he has provided a table comparing the features of the claims to D3 and other cited documents, Mr Ayris’ evidence is based on the claims as accepted and not on the claims as amended. There is no evidence in reply from the opponent in respect of the amended claims.
The evidence of Dr Tapson on the other hand is based on the amended claims bar the reference to a ‘core barrel drill’. In his evidence in the annex titled “Prior art comparison table” (JT-01) he has identified certain features of claim 1 which in his opinion are not disclosed in D3. The applicant’s submissions for the hearing also focusses on these differences. I will also therefore first focus on these features.
Integer (a): a system for identifying or monitoring the orientation and position of a downhole drilling device
The opponent has submitted that paragraph [0021] of D3 clearly discloses that the drilling assembly 130 may also contain one or more position sensors (248) that are configured to periodically or continuously provide measurements relating to the inclination and orientation of the drilling assembly 130 in the wellbore.
The applicant has responded as follows:
“3.16 This passage merely discloses sensors on a wellbore drill which may be configured to provide measurements relating to the inclination and orientation of the drilling assembly in the wellbore. This passage does not disclose a system for identifying or monitoring the orientation and position of a downhole drilling device. No guidance is provided as to how the sensors are to be used or arranged to provide the data in relation to the inclination and orientation of the drilling assembly”.
I do not find the applicant’s submissions persuasive. While the invention of D3 primarily relates to a system for estimating the orientation of a liner during drilling of a wellbore, it clearly also discloses that the drilling assembly is provided with suitable sensors such as accelerometers and magnetometers for providing measurements relating to the inclination and orientation of the drilling assembly 130. Such sensors are well known in the art and a skilled addressee would readily understand how to determine the orientation of the drilling assembly using these sensors. Paragraph [0028] also discloses that D3 is provided with a steering device for changing the direction of drilling and it is inherent that this will take into account the measurements relating to the inclination and orientation of the drilling assembly.
This integer is disclosed in D3.
Integer (b): being a directional core barrel drill
The opponent has submitted that D3 teaches the drilling assembly/drill string can be steered and is therefore a directional drill.
The applicant has submitted as follows.
“3.20 Devico does not point to any clear disclosure of a directional core barrel drill in D3. There is no direct reference to a core barrel drill in D3 (only an apparatus for drilling of a wellbore) and Devico has not led any evidence on such a disclosure being made in D3. Indeed, the configuration described in D3 is of a drill string including a pilot bit, followed ‘uphole’ by a reaming drill bit to enlarge the drilled hole. This is not a core barrel drill, which is for drilling and removing sample cores”.
I accept the applicant’s submission. D3 is directed to a drilling assembly for drilling wellbores. There is no suggestion that it can be used in a drilling assembly for drilling and removing core samples.
This integer is not disclosed in D3.
Integer (d): further comprising a deflection mechanism
The opponent has submitted that there is a clear disclosure of a deflection/steering mechanism in paragraph [19] and claim 9 of D3.
Paragraph [19] that I have reproduced earlier does disclose that “The drilling assembly 130 may further include a steering device or mechanism 220 above the pilot drill bit 150. In one aspect, the steering device 220 may be a closed-loop device or system, which contains a plurality (generally three or more) of independently-controlled force application members, such as members 224a,
224b, etc”.
Claim 9 of D3 reads as follows:
“9. The apparatus of claim 8 further comprising a steering device in the drilling assembly having a plurality of independently- adjustable force application members that are configured to apply a force on the wellbore to drill the wellbore along a desired direction”.
The applicant has submitted as follows regarding the disclosure of the steering device in paragraph [19] of D3.
“3.25 This is a description of the closed-loop system which enables steering of the drilling assembly. Such a steering function is very different to the deflection mechanism as clearly described in the Application. The deflection mechanism is connected to a system in which data generated from the first and second detectors in the orientation unit are used to identify, control and/or adjust the position of the deflection mechanism of the downhole drilling device.6 D3 discloses no such deflection mechanism”.
Integer (d) concerns whether there is a deflection mechanism for the drilling device or not and not about what data is used by the deflection mechanism which is more relevant to integer (n) that I will discuss later. There is clear disclosure of a deflection/steering mechanism for changing the direction of drilling.
Integer (d) is disclosed in D3.
Integer (j): the first detector is essentially centrically positioned with respect to the inner element and at any time sensing, directly or indirectly, the rotational position of the reference point member
The opponent has submitted as follows.
“66. With respect to feature 1(j), the first detector is said to be essentially centrically positioned with respect to the inner element, however D3 is silent on why it is essential to position the first detector in the centre.
67. D3 states that in one embodiment the liner orientation sensor may be placed proximate the feature 263, and references figure 2. D3 then further states:
Any suitable sensor arrangement may be utilized to determine the orientation or relative location of the feature 263 with respect to a location of a known element on the drilling assembly 130, such as the location of the sensing element 266 or another marker associated with the drilling assembly 130 or the drill string 118. In one configuration, the liner orientation sensor 260 may include a coil carried by the drilling assembly 130 as the sensing element 266 configured to sense a magnetic field from a magnet (the sensed element 265) placed on the liner 120.
68. We submit that D3 does not provide any limitation of the location of the sensing element (the first detector of the Opposed Application). On the contrary D3 provides anticipation for any location of the sensing element as the location of the sensing element 266 can be anywhere, which includes centrically positioned”.
The applicant has responded as follows.
“3.29 In its analysis, Devico equates:
(a) the liner feature 263 in D3 with the reference point member in the Application; and
(b) the sensing element 266 [the sensing element carried by the drilling assembly] with the first detector in the Application, and relies on D3 not providing any limitation of the location of the sensing element 266, but rather suggesting that the location of the sensing element 266 can be anywhere.
3.30 Additionally, Devico’s submissions are silent on the second part of integer 1(j) which requires that the first detector is at any time sensing, directly or indirectly, the rotational position of the reference point member (due to the 360-degree view). The passage from D3 above describes a sensor arrangement to determine the orientation or relative location of the liner feature with respect to a location of a known element on the drilling assembly. This is not a clear disclosure of the sensor at any time sensing the rotational position of the reference point member relative to the direction of earth gravity.
This does not amount to a clear and unmistakable direction of the sensing element being centrically positioned with respect to the inner element and thereby having a 360-degree view. To the contrary, Dr Tapson explains that: ‘[t]he sensing element 266 is clearly not centric – it should be noted that the figure represents the sensing element 266 as a small off-axis box (all other labels use arrows)’”.
I agree with the applicant. I have earlier construed the term “centrically positioned” as being positioned on the centre axis of the inner element. The fact that the specification is silent on why it is essential to position the first detector in the centre of the inner body element is no reason to ignore this limitation in the claim.
When I look at figure 2, the sensing element 266 clearly appears to be off-centre from the axis of the drilling assembly 130. I also do not accept the opponent’s submission that because D3 does not provide any limitation of the location of the sensing element, it can therefore be positioned anywhere including the centre. Furthermore, the opponent has not clearly identified in D3 what constitutes the inner body element within which the first detector (sensing element 266) needs to be centrically positioned.
In relation to the applicant’s argument that D3 does not disclose determining the rotational position of the reference point member (liner feature 263), while I accept that there is no such explicit disclosure in D3, in my view the disclosure that the sensing element determines the orientation of the liner feature with respect to the drilling assembly would include not only linear movement but also rotational movement. This inference is also supported by the disclosure that “The operator may rotate the liner 130 from the surface to align the feature 263 along the desired orientation before setting the liner 130 in the wellbore 110”[6] (emphasis added). In my view, this clearly suggests that the rotational position is also determined by the sensing element.
[6] D3 at [0025]
Integer (j) is however still not disclosed in D3 due to the lack of the centric positioning feature of claim 1.
Integer (n): a device(s) for using data provided by the processor as input to identify, control and/or adjust the position of the deflection mechanism of the downhole drilling device
In relation to this integer, the opponent has submitted as follows:
“69. With respect to feature 1(n), D3 teaches a control unit 170 with a processor 172 that can access data from the sensors used to measure inclination, orientation of the drilling assembly 130, that can include accelerometers, magnetometers and gamma ray devices, and calculate the inclination, orientation of the drilling assembly 130 in the wellbore.38 There is also disclosed a data communication device 274 that provides two-way data communication between the controller 190 that can control the steering device (independently-adjustable force application members) 220”.
The applicant has responded as follows.
“3.33 There is no disclosure of a device which uses the data from a first detector (sensing the rotational position of the reference point member) and the second detector (sensing earth gravity) as input to identify, control and/or adjust the deflection mechanism of the downhole drilling assembly relative to the direction of earth gravity. Indeed, D3 does not mention ‘earth gravity’ at all, which is unsurprising given that the reference point in D3 is a ‘known element on the drilling assembly’”.
D3 discloses that the surface controller determines the orientation of the drilling assembly 118 from the information received from the orientation sensors 172, that are typically accelerometers and magnetometers. Although not explicitly stated as such, it is evident that from the disclosure in paragraphs [18] and [19] that the surface controller will also then use this orientation information to control the steering device 220 of the drilling assembly to control the direction of drilling. It is also stated in these paragraphs that the surface controller also determines the orientation of the liner feature 162 from the liner orientation sensor 170 measurements. However as submitted by the applicant, there is no explicit disclosure that the liner orientation sensor measurements are also used by the surface controller to control the steering device. There is only reference to using measurements relating to inclination and orientation of the drilling assembly per se and there is nothing to suggest that the orientation of the liner with respect to a known marker in the drilling assembly also affects the orientation of the drilling assembly.
In relation to sensing gravity, while I accept that there is no explicit reference to sensing gravity, Mr Ayris is of the view that the inclinometer/accelerometers as described in D3 are used to detect gravity and that this is therefore inherent in the disclosure of D3. While Dr Tapson is of the view that integer (n) as a whole is not disclosed, he does not dispute the view of Mr Ayris in relation to the feature of sensing gravity and using this to determine the orientation of the drilling assembly. I am therefore satisfied that the sensing of gravity for determining the orientation of the drilling assembly is disclosed in D3.
However, as the use of the data regarding the rotational orientation of the liner to control the deflection mechanism is not disclosed, this integer as a whole is not disclosed in D3.
Integer (h): the inner body element is retrievable
Although Dr Tapson has accepted in his “Prior art comparison table” that this integer is disclosed, he has not indicated where this feature is present in D3. I suspect that he has relied on the disclosure in paragraph [0017] where it notes that the reaming drill bit or the expanding device of the liner can be retrieved leaving the liner in place within the wellbore. I note that the examiner has also relied on this disclosure when D3 was cited during examination.
However, I have earlier interpreted this integer as requiring that the inner element alone can be retrieved to the surface leaving the outer element and the drilling head still in the downhole. There is nothing in D3 to suggest that the liner orientation sensor 260 alone can be retrieved from the wellbore.
In my view, this integer is not disclosed in D3.
Summary regarding D3.
D3 does not disclose that the downhole drilling device is a core barrel drill, that the first detector is essentially centrically positioned with respect to the inner element, that the inner body element with the detector can be retrieved and that the data regarding the rotational orientation of the liner is used in the control of the deflection mechanism. Claim 1 is therefore novel.
Independent claim 9 also has the same features of claim 1 that are not disclosed in D3. It follows that claim 9 is also novel.
INVENTIVE STEP
The statutory basis for inventive step is set out at s7(2) and s7(3) of the Act, and is reproduced below:

(2) For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed (whether in or out of the patent area) before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).
(3) The information for the purposes of subsection (2) is:
(a) any single piece of prior art information; or
(b) a combination of any 2 or more pieces of prior art information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have combined.
The test for obviousness was given by Aicken J in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12 at [45]; (1981) 148 CLR 262 at 286.
“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”.
In AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99, the Full Court held at [203] that in formulating the problem it is not permissible to incorporate information that is not available to the person skilled in the art either as common general knowledge or information available under subsection 7(3).
In relation to what level of inventiveness is required to sustain a patent, the Full Federal Court in Garford Pty Ltd v Dywidag Systems International Pty Ltd [2015] FCAFC 6 stated as follows at [44]:
“The inventiveness required to sustain a patent for a claimed invention is quite small. A “scintilla” of inventiveness is all that is required: Alphapharm at [195]. However, there must still be “some difficulty overcome, some barrier crossed” (per Lockhart J in RD Werner & Co Inc v Bailey Aluminium Products Pty Ltd [1989] FCA 57; (1989) 25 FCR 565 at 574) or some contribution to the art “beyond the skill of the calling” (Allsop Inc v Bintang Ltd [1989] FCA 297; (1989) 15 IPR 686 at 701)”.
The Person Skilled in the Art
It is well established that the construction of the specification and prior art is to be approached through the construct of the person skilled in the art at the relevant priority date. That person is a non-inventive skilled worker in the relevant field with an understanding of the common general knowledge. Such a person was described by Finklestein J in Root Quality v Root Control Technologies Pty Ltd (2000) 49 IPR 225 at [70- 71] wherein his honour discussed the authorities noting that the skilled addressee would be:
“Those likely to have a practical interest in the subject matter of the invention. A variety of people may have that interest. There are those who might wish to make or construct the invention, those who may wish to compound the invention and those who may wish to use the invention”.
The opponent has submitted that the person skilled in the art would be “persons, including a team, working in the field of drilling boreholes and downhole instrumentation and techniques suitable for determination/measuring borehole orientation and drilling direction”[7].
[7] Opponent’s written submissions at [18]
The applicant has agreed with this definition but has added that the person skilled in the art would also include “persons who have experience in the field of designing equipment required for drilling boreholes and downhole instrumentation”[8].
[8] Applicant’s written submissions at [4.10]
I agree that this is a fair representation of the person skilled in the art for the subject matter of the present invention.
Mr Ayris has a Diploma in Cartography and started work in the mining industry around 1985 with Goldsworthy Mining in WA as a cartographer and his role also included drafting drill hole plans and other drilling related activity. In 1987 he became a software consultant for the mining industry. In 1989 he formed Downhole Surveys, a company that provides drill hole surveying services to drilling and mining companies. He notes that during his career he has had experience with a number of proprietary surveying and orientation tools. He is also listed as inventor for a number of patent applications.
Dr Tapson has a PhD in Engineering and is currently Chief Technology Officer at electronics company IONA Tech, USA. In 1997 he founded the Center for Instrumentation Research at Cape Technicon, in Cape Town, South Africa. The Center performed research and development into instruments for major mining companies in South Africa. This included instrumenting drill heads with accelerometers and other inertial measurement systems and also electronic communications between drill head instruments and the surface rig. He notes that this work continued to 2007. There is nothing to indicate whether his work since 2007 relates to instrumentation for drilling technologies. He is also listed as inventor for a number of patent applications.

It is clear from the above that both Mr Ayris and Dr Tapson have had involvement with orientation tools and instruments for drill heads. However, as it appears that Dr Tapson’s involvement with drill head instruments ended in 2007, Mr Ayris may have a better appreciation of the common general knowledge in the art at the priority date of 14 August 2014.
Common General Knowledge
Based on the evidence of Mr Ayris and Dr Tapson, the opponent has identified at paragraphs [84]-[89] of their submissions, what it considers are matters of common general knowledge in the art at the priority date. The applicant has provided a neat summary of these matters in paragraph 4.24 of their submissions which I have reproduced below.
“4.24 Devico appears to summarise the common general knowledge on which it relies on page 21 of its submissions, being as follows.
(a) Downhole drilling involves several sensors used to determine orientation of the drilling device and/or drill hole, sensors such as accelerometers, inclinometers, magnetometers, and gyroscopes, and that these were well known, and in use, before the priority date, having been used also in oil and gas industry for drilling.
(b) Having a sensor centrically aligned was well known before the priority date as it helped to reduce errors.
(c) No other sensors apart from those well known in the field would be suitable to sense earth’s gravity.
(d) A typical downhole instrument would have sensors (depending on purpose), analogue to digital converters, microprocessor controller, electronic memory, real time clock, data interface (wired, wireless, optical), and a source of power.
(e) Measurement-while-drilling (MWD) systems have been known since 1990 with orientation systems that can measure the azimuth and pitch as well as other drill parameters. Such measurements can then be communicated to the well head by real-time communication.
(f) Directional core barrel drills utilise an orientation system based on a mule shoe / UBHO on the basis of WO2013/028075 (Mule Shoe Patent)”.
The applicant has not disputed the above matters of common general knowledge except for matter (f) stating that the opponent has not established that the Mule Shoe Patent was part of the common general knowledge. Based on the available evidence, I am satisfied that matters (a)-(e) were common general knowledge at the priority date. Regarding matter (f), the fact that mule shoes have been disclosed in certain patents does not make them part of the common general knowledge without further evidence from experts in the field that these had become part of the background knowledge of persons skilled in this art. Neither Dr Tapson or Mr Ayris have made any such assertion. I am therefore not satisfied the matter (f) was common general knowledge at the priority date.
The Problem to be Solved
The opponent has provided no submissions as to what they consider to be the problem that the claimed invention seeks to address.
The applicant has submitted that the relevant problem to be solved is to provide an improved orientation system for a directional core barrel drill that does not require the use of a mule shoe.
I agree that the above-stated problem is consistent with the problems set out in the background to the invention. This is the problem that I will therefore adopt in my inventive step analysis.
Inventive Step in view of the common general knowledge
The applicant has submitted that there is no evidence from Mr Ayris that the person skilled in the art would have been directly led “to set up a system that uses a first sensor (centrically positioned with respect to the inner element and at any time sensing the rotational position of the reference point member) and a second sensor sensing earth gravity, with a processor adapted to retrieve the data for calculating and determining the rotational orientation of the fixed reference point member relative to earth gravity, and using those data as inputs to identify, control and/or adjust the position of the deflection mechanism of the downhole drilling device”[9] when faced with the problem of an orientation system that does not use mule shoes.
[9] Applicant’s written submissions at [4.26]
I agree. Furthermore, I would also note that the opponent has not made any submissions alleging lack of inventive step based on the common general knowledge alone.
The claimed invention does not lack an inventive over the common general knowledge alone.
Inventive Step in light of the common general knowledge and D1
D1 is titled “Drill tool shaft-to-housing locking device” and relates to a shaft-to-housing locking system in a directional wellbore drilling device. Figures 1(b) and 14 are reproduced below.
It discloses a housing orientation sensor apparatus (362) comprising magnetometers and/or accelerometers that can sense the orientation of the housing (46) in three dimensions. In an embodiment depicted in figure 14, the housing orientation sensor apparatus can sense the orientation of the housing relative only to gravity.
Figure 14 shows a reference magnet (436) that is fixed to the housing (46) and housing reference sensors (448) that are mounted on the outside of the sensor body (446) that is rotatable with the drilling shaft (24). The rotational position of the reference magnet is detected each time the housing reference sensors pass. The direction of earth’s gravitational field is measured by a gravitational sensor (450) that is also mounted on the sensor body (446). D1 describes in paragraph [0282] how the orientation of the housing is determined.
“[0282] The position of the housing reference indicator (436) is fixed in relation to the housing (46) at a known orientation relative to a reference position (such as a theoretical "high side"). The relative positions of the housing reference sensor (448) and the gravity reference sensor (450) are fixed in relation to each other. As a result, by sensing the relative positions of the housing reference indicator (436) and the gravity reference indicator (442), it is possible to determine the orientation of the housing (46) relative to gravity (i.e., the actual low side)”.
The applicant has submitted that integers (h), (j), (l) and (m) of the amended claims are not disclosed.
It is evident from paragraph [0282] that the orientation of the housing is determined based on the data from both the housing reference sensor and the gravity reference sensor. In my view, integers (l) and (m) are disclosed in D1.
I agree that there is no disclosure in D1 that the inner element is retrievable or that the housing reference sensor can be located at the centre axis of the inner element.
In relation to the retrievable feature, the applicant highlighted that it allows the sensors to be brought to the surface for downloading data and also to perform servicing or calibration of the sensors without bringing the orientated device or the entire drill to the surface.
In relation to the centric positioning, the applicant submitted that having the sensors centrically positioned allows the sensor to sense the position of the reference point member at any point in time and not just when it passes the reference point member as in D1.
They have further submitted that Mr Ayris has not addressed why the skilled person would modify the teachings of D1 to position the housing reference sensor centrically and make the inner element retrievable. They also pointed out that as D1 relates to drilling of wellbores, the sensors cannot be placed on the centre axis as this is also the axis of the central passage through which oil in the well bore would need to flow.
I am inclined to agree with the applicant. The housing reference sensor of D1 only senses the reference indicator when it passes by the indicator every rotation and there is no suggestion that the housing sensor can be placed centrically within the sensor body 446. While I am satisfied that it was known to place sensors centrically within a drilling assembly, D1 has chosen to place both the housing sensor and gravity sensor non-centrically whereby they sense the housing reference indicator (436) and the gravity reference indicator (442) only intermittently. As noted by the applicant this positioning is understandable and probably necessary given that the drilling device of D1 is for drilling wellbores. There is no evidence to suggest or even hint that it would have been a matter of routine for the person skilled in the art to have modified this sensor positioning of D1 to a centric positioning if the device of D1 were to be used for core barrel drilling.
In relation to the retrievable integer, the sensor body is fixed to the drilling shaft clearly precluding it from being retrievable from the rest of the drilling head and as noted by the applicant there are definite advantages in having the inner body element and the sensors retrievable.
Tellingly neither Mr Ayris’ evidence or the opponent’s submissions explicitly asserts that the claimed invention lacks an inventive step in light of the D1 and the common general knowledge.
I am not satisfied that the claimed invention lacks an inventive step in light of the D1 and the common general knowledge.
Inventive Step in light of the common general knowledge and D2
D2 is titled “Orientation sensing apparatus and a method for determining an orientation”
and is directed to orientation sensing apparatus which “uses one or more gravity reference instruments and which can be used in an environment where the gravity reference instruments may be subjected to rotation”[10].
[10] D2 at [0022]
The applicant submitted that according to Dr Tapson, integers (f), (g), (j), (l) and (m) are not disclosed in D2 and that the opponent has not refuted this or reasoned why the skilled person would have proceeded from D2 to the claimed invention by way of routine steps.
I agree. The opponent has not made any submissions explaining why the independent claims lack an inventive step over D2. Their submissions relate more to the disclosure of the sensor being a Hall Effect sensor that is defined in claim 3 rather than an analysis of the features of the independent claims.
I am not satisfied that the claimed invention lacks an inventive step in light of the D2 and the CGK.
Inventive Step in light of the common general knowledge and D3
The opponent’s submissions in relation to D3 focusses on the feature of the centrical positioning of the first detector in the inner body element, which according to them is arguably the only difference between the claimed invention and D3, and why the skilled person would have as a matter of course modified the off-centre positioning of the liner orientation sensor 260 to a centric positioning.
The applicant submitted the D3 addresses a different problem to the claimed invention and that there is no evidence to establish that the skilled person faced with the problem would have been directly led to the claimed invention from the teachings of D3.
As I have noted earlier, while the invention of D3 is primarily directed to a system for estimating the orientation of the liner, it also discloses one or more position sensors (248) configured to periodically or continuously provide measurements relating to the inclination and orientation of the drilling assembly in the wellbore. However, very little information is given in relation to these position sensors except for noting that these sensors could include accelerometers, magnetometers, and gamma ray devices.
The features of the orientation unit in D3 that the opponent relies on, such as the feature 263, the sensed element 265 and the sensing element 266 all relate to the orientation unit for estimating the orientation of the liner that is to be deployed in the wellbore and not to the orientation unit of the drilling assembly.
As submitted by the applicant, I find it hard to accept that the skilled person trying to find an improved orientation device for a core barrel drill, would be motivated to try the orientation sensor arrangement of the liner deploying system of D3 for this purpose, when even D3 only uses the standard sensors such as accelerometers for steering the deflection mechanism of its wellbore drilling assembly. Even if they did, to arrive at the claimed invention, they would still have needed to modify the arrangement so as to position the sensing element centrically and make the sensing element ‘retrievable’ in the way that I have construed this term. The opponent’s expert, Mr Ayris has not addressed the amended claims and hence there is no expert evidence to support the opponent’s view that the claimed invention lacks an inventive step in light of D3. While the opponent has also submitted that documents D4, D6 and D7 show a detector that is centrically positioned, I have already found that even accepting that such centrical positioning of sensors was common general knowledge, the claimed invention still does not lack an inventive step over D3. Hence, I do not see the need to further consider these documents.
I am not satisfied that the claimed invention lacks an inventive step in light of D3 whether combined with the common general knowledge or with other prior art documents.
CONCLUSION
None of the grounds of opposition has been made out. The claimed invention is novel and inventive.
Subject to appeal, I direct that the application proceeds to grant.
COSTS
Costs normally follow the event. However, the opposition process has resulted in the applicant making significant amendments to the claims after the filing of the opponent’s evidence in support. In this sense the opponent can be seen as being partially successful despite the opposition per se being unsuccessful.
As a consequence, I award costs against the applicant according to Schedule 8 of the Regulations up to the date the amendments dated 17 September 2021 were allowed, and from the date the amendments were allowed I award costs against the opponent according to Schedule 8 of the Regulations.
R Subbarayan
Delegate of the Commissioner of Patents