DYWIDAG-Systems International Pty Limited v FCI Holdings Delaware, Inc - [2018] APO 75

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
DYWIDAG-Systems International Pty Limited v FCI Holdings Delaware, Inc. [2018] APO 75

Patent Application: 2015261553

Title:Tension Assembly

Patent Applicant:                   FCI Holdings Delaware, Inc.
Opponent:  DYWIDAG-Systems International Pty Limited
Delegate:  Xavier Gisz
Decision Date:  30 October 2018
Hearing Date:  3 August 2018, in Sydney

Catchwords: PATENTS - opposition to the grant of the patent under s 59 – opposed on the basis of novelty, inventive step, support, and utility – clarity also considered – all grounds of opposition are unsuccessful – costs awarded against the opponent

Representation: Counsel for the applicant: Angus Lang
Patent attorney for the applicant: David Hughes and Jennifer Wyndham-Wheeler of Griffith Hack

Patent attorney for the opponent: Greg Gurr and David Kark of Spruson & Ferguson

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2015261553

Title:Tension Assembly

Patent Applicant: FCI Holdings Delaware, Inc.
Date of Decision: 30 October 2018
DECISION
The opposition fails on all grounds raised in this opposition. Following a delay of one month, and subject to appeal, I direct the application proceed to grant. Costs are awarded against the Opponent according to Schedule 8.
REASONS FOR DECISION
Background

Application 2015261553 in the name of FCI Holdings Delaware, Inc. (the Applicant) is divisional application of 2009201516 and has a priority date of 17 April 2008. A request for examination was filed on 11 December 2015. A notice of acceptance of the Application was published on 27 April 2017. A Notice of Opposition was filed on 27 July 2017 by DYWIDAG-Systems International Pty Limited (the Opponent) and a Statement of Grounds and Particular was filed by the Opponent on 27 October 2017.
Evidence in Support was completed on 12 December 2017. Evidence in Answer was completed on 13 March 2018. Evidence in Reply was completed on 4 May 2018.
The hearing was held in Sydney in the office of Spruson & Ferguson on 3 August 2018.
Amendments
Amendments to the description were proposed on 11 April 2018. The amendments were advertised for opposition on 24 May 2018 for a period of two months. The amendments were not opposed. The amendments were allowed on 28 August 2018.
Evidence
Evidence in Support
The Opponent’s evidence in support comprises a declaration by Russell Clive Frith filed on 12 December 2017 with Exhibits RF-1 to RF-12.
Evidence in Answer
The Applicant’s evidence in answer comprises:
·A declaration by Brian McCowan filed on 13 March 2018 with Annexures BM-1 to BM‑7; and
·A declaration by Otto Molnar filed on 13 March 2018 with Annexures OM-1 to OM-3.
Evidence in Reply
The Opponent’s evidence in reply comprises a declaration by Russell Frith filed on 7 May 2018 with Exhibits RF-13 to RF-14.
APPLICABLE LAW
The request for examination of the patent application was filed on 11 December 2015. As a consequence, substantive amendments to the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 that came into effect on 15 April 2013 apply to the present patent application.
Thus the standard of proof that applies in the present case is the balance of probabilities. I must accept the application if satisfied on the balance of probabilities that the application complies with the Act. If I am not so satisfied, then I can refuse the application.
Specification
The specification ends with 18 claims comprising one independent claim and 17 dependent claims. The independent claim is reproduced below:
A tensioning assembly for a cable bolt, the assembly comprising:
- a clamping device adapted for fastening to the bolt;
- a carrier member; and
- an outer member adapted for location on the carrier member whereby an end of the carrier member projects beyond the outer member, with the end of the carrier member being adapted for engagement by a drive apparatus to rotate the carrier member relative to the cable bolt to cause a relative movement of the carrier member away from the outer member in the direction of the bolt’s axis, which movement causes the clamping device to fasten to the bolt.
The invention
The invention is a device for clamping a cable bolt and tensioning a cable bolt without imparting a twisting on the cable bolt.
The tensioning assembly is an outer member with internal threading with a carrier member with external threading. The outer member is held stationary against a bearing plate or directly against the rock, while the carrier member is rotated (by ‘unwinding’) such that the carrier member moves away from the outer member.
The clamping device comprises a barrel and wedge assembly (the barrel surrounds the wedges) that interact with each other to enable clamping of the assembly to the cable bolt. When the clamping assembly is tensioned, the barrel is urged against the wedges to force them against the cable bolt, thereby fastening the clamping device to the bolt.
The clamping device sits within a recess in the carrier member. To provide for easier rotation of the carrier member with respect to barrel and wedge assembly during the application of tension to the cable bolt, an antifriction washer or a thrust bearing can be located between the clamping device and the carrier member.
Grounds of Opposition
The patent application was opposed on the grounds that the patent application lacks of novelty, an inventive step, utility and full support.
Novelty law
A claimed invention is deprived of novelty if it has been given to the public before the priority date, either by prior use of a product or process, or by publication of information that equates to the claimed invention (Justice Bennett in Danisco A/S v Novozymes A/S (No 2) [2011] FCA 282 at [248]; (2011) 91 IPR 209 at [248]). It is well established that the general test for anticipation is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20]; (1977) 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 of the essential features of the invention as claimed (Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40 at [19]; (1990) 16 IPR 545 at 549). To meet this requirement, the prior art must contain “clear and unmistakable directions” to the claimed invention (Pfizer Overseas Pharmaceuticals v Eli Lilly and Co [2005] FCAFC 224 at [314]; (2006) 68 IPR 1 at 67 [314]). However, if the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee’s claim, but would be at least as likely to be carried out in such a way that would not do so, the patentee’s claim will not be anticipated (General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd (1971) 1A IPR 121 at 138). Where a prior publication does not explicitly disclose all of the integers of the claimed invention, it would still deprive the claimed invention of novelty if (i) the skilled reader understands the disclosures of the prior publication to include a missing integer, and (ii) if the document contains a direction to use a process that inevitably or inexorably results in something within the claim (Justice Bennett in Danisco supra).
Novelty
The Opponent alleged the claimed invention lacked novelty and inventive step in light of Australian Design registration 131232.
Two possible interpretations of Australian Design registration 131232
In Exhibit RF-9 of his first declaration Dr Frith annotated the Design Registration which is reproduced below.
Because of the brief nature of the disclosure of 131232, there is some uncertainty of what is actually disclosed.
First interpretation of 131232
In Exhibit OM-3 of his declaration Mr Molnar provides a 3D exploded view of 131232 how he (and the Applicant) understands the disclosure of 131232, which I refer to hereinafter as the first interpretation:
In this case, the nut (8) is separate from the inner tube (10). As the nut is rotated (wound up), this pushes the inner tube downwards. The inner tube pushes the barrel (3) which pulls and thus tensions the cable bolt. I have edited the figure of 131232 to depict this movement:
Second interpretation of 131232
I have modified Mr Molnar’s 3D exploded view to make an illustration of how the Opponent understands the invention of 131232 which I refer to hereinafter as the second interpretation:
In this case the nut (8) and the inner tube (10) are integrally formed. As the integrally formed nut and shaft are rotated (wound down) they engage with the internal thread of the outer sleeve (9) and move downwardly. The nut (8) pushes the barrel (3) which pulls and thus tensions the cable bolt. I have edited the figure of 131232 to depict this movement:
Which interpretation of Australian Design registration 131232 is correct?
On the basis of the drawing alone
Mr Molnar states at paragraph 19:
“...the top and bottom of the nut in the section view on the right-hand side on page 5 is separated from the cylinder by horizontal lines. This indicates that the nut is a separate component from the cylinder and the tapered component below the nut.”
Mr McCowan states at paragraph 151:
“...I am surprised Mr Frith favoured his second interpretation. I am unable to identify any markings on the drawings that indicate that the nut 112 and the centre cylinder tube 118 are fixed relative to each other. The end fitting 100 components are defined as separate components through distinct cross-hatching that is separated by a white section. Although, the lines of the cross-hatching of the centre cylinder 118 look similar to the lines of the cross-hatching of the nut 112, they are in fact different for several reasons. First, the lines of the cross-hatching of the nut 112 are denser (there is less space between each line) and second, they extend at a slightly steeper angle relative to the horizontal than the lines of the cross-hatching of the central cylinder 118. Third, each component and the white section are defined by solid lines which denotes that they are indeed separate components. In my view, the drawings illustrated that the nut 112 and the centre cylinder 118 cannot be fixed together to act as a single component and must be separate acting as two components that are moveable relative to one another.”
Dr Frith in his second declaration states at paragraph 28:
“I cannot see anything in the drawings of the '232 Design (or the '367 Design) that confirm that the nut (8) and the inner tube (10) are movable relative to each other. I agree that the cross hatching does indicate that the nut (8) and the inner tube (10) are separate components. However, they could readily be fixed to each other such as by, for example, spot welding, a strong shear pin, or even a cross thread. The nut (8) and the inner tube (10) so fixed would act as a single component (14) in the manner that I have described at paragraph 57 of my first Declaration.”
The experts agree that the subtle difference in cross-hatching on the nut and tube indicate the nut and the tube are separate components. However, Dr Frith states that the separate components could readily be fixed to each other whereas Mr Molnar states that the nut and inner tube are moveable relative to one another.
Practical considerations
The Opponent argued that the first interpretation would have practical problems, thus interpretation 2 should be adopted.
The first problem identified by Dr Frith at paragraph 53 of his first declaration is that the load transferred from the cable to the device is concentrated on the nut:
“Any tension load applied to a cable passing through the hole (1) would need to be held by the limited length of thread on the nut (8). Based on my understanding of general engineering principles, I understand that longer lengths of thread are capable of holding larger loads compared to shorter lengths of the thread (all other factors being equal), as longer lengths of thread are able to dissipate any load over their larger available contact area while shorter lengths of thread concentrate the load over their smaller available contact area. Accordingly, it is my understanding that the length of thread of the nut (8) may be a limiting factor in the amount of tension that can be applied to and retained by the cable.”
The second problem identified by Dr Frith at paragraph 55 of his first declaration is that the load transferred between the inner tube (9) and the barrel would be concentrated on the contact area between these two elements:
“It is clear to me that only part of the thickness of the sidewall of the inner tube (10) bears against the top surface of the barrel (3). Accordingly, I understand that there will be a small contact area (13) between the base of the inner tube (10) and the top of the barrel (3) and that any tension applied to the cable will pass through this small contact area (13). Accordingly, it is clear to me that there will be a high bearing pressure applied to the small contact area (13) when large tension loads are applied to the cable. In my opinion, the high pressure resulting from concentrating large loads at the small contact area (13) could be a source of failure for the end fitting when the cable is subjected to large tension loads.”
Mr McCowan states at paragraph 150:
“Mr Frith has dismissed his first interpretation on the basis that the end fitting 100 would fail in operation. I do not consider that the end fitting 100 is necessarily a good design that is functional in operation it is the design that is represented by the drawings.”
Although there may be deficiencies in the first interpretation which make it a sub-optimal design, this does not necessarily imply the first interpretation is incorrect — the designer of 131232 could have been unaware or unconcerned about the sub-optimality of the design. Furthermore, proposing modifications or improvements to a design goes beyond the task of interpreting what is actually disclosed.
Conclusion on interpretation of 131232
There is a lack of clear and unmistakable directions in the disclosure of 131232 to the second interpretation. Furthermore, if the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee’s claim, but would be at least as likely to be carried out in such a way that would not do so, the patentee’s claim will not be anticipated (General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd (1971) 1A IPR 121 at 138). Consequently I conclude that 131232 discloses the first interpretation.
Novelty analysis
The Opponent’s argument is predicated on the second interpretation of 131232 being adopted. As I have found that the first interpretation of 131232 should be adopted, the Opponent’s novelty case is obviated. For completeness I will briefly explain why the novelty case on the basis of the first interpretation fails.
On the first interpretation the nut rotates up relative to the central cylinder (although it does not move axially with respect to the outer housing) in the direction of the external thread until the dome component engages either the rock face or a plate at the rock face, and so the requirement of claim 1 that the carrier member be rotatable to cause the relative axial movement of the carrier member away from the outer member is not present.
Inventive step law
The test for obviousness is whether it would have been a matter of routine to proceed to the claimed invention. In Wellcome Foundation Ltd v V.R. Laboratories (Aust.) Pty Ltd [1981] HCA 12 Justice Aickin stated:
“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.”
Inventive step
The Opponent states in their submissions at 97:
“Faced with the same interpretation, Dr Frith, using his common general knowledge, identified several problems with his first interpretation of the '232 Design. Dr Frith discussed in paragraphs 57 to 64 of the First Frith Declaration that he would expect an end fitting made according to his first interpretation of the '232 Design to have several problems in operation that would reduce its effectiveness. In the First Frith Declaration, Dr Frith discussed how he would address the problems he identified with his first interpretation of the '232 Design, which directly led him, as a matter of course, to his second interpretation of the '232 Design. Dr Frith discussed in paragraph 64 of the First Frith Declaration that he would expect an end fitting produced according to his second interpretation of the '232 Design would provide better results than an end fitting produced according to his first interpretation of the '232 Design. Dr Frith has thus clearly expected that production of an end fitting according to his second interpretation would provide a useful result.”
To arrive at the second interpretation from the first interpretation, the person skilled in the art would need to make four changes to the first interpretation of 131232.
The first change would be affixing the nut to the tube. This change is described in the second Frith declaration at 28:
“[The nut and inner tube] could readily be fixed to each other such as by, for example, spot welding, a strong shear pin, or even a cross thread. The nut (8) and the inner tube (10) so fixed would act as a single component (14) in the manner that I have described at paragraph 57 of my first Declaration.”
The second change would be making the outer sleeve (9) internally threaded. This step is described in the first Frith declaration at paragraph 57:
“... I then thought that the nut (8) and the inner tube (10) may be fixed relative to each other so as to act as a single component (14), and that the outer sleeve (9) has an internal thread that engages with an external thread formed on the outer surface of the inner tube (10).”
The third change would be that the outer sleeve would need to be restrained from rotating as described in the first Frith declaration at paragraph 58:
“The outer sleeve (9) would need to be restrained from rotating to allow relative rotation between the inner tube (10) and outer sleeve (9), when the nut (8) is rotated so as to withdraw the inner tube (10) out of the outer sleeve (9), a gap between the base of the outer sleeve (9) and the top of the nut (8) would be created.”
This would typically involve the addition of a bearing plate as disclosed in the opposed specification. The outer sleeve would need to be pressed sufficiently firmly against the bearing plate such that it was stationary while the nut and inner tube were rotated.
The fourth change would be that a thrust bearing would be needed. This is described in the first Firth declaration at paragraph 66:
“The main problem I can see with the '232 Design is the friction between the rotating and non-rotating parts. In my second interpretation, this friction is between the top surface of the barrel (3) and the base of the component (14) defined by the inner tube (10) and the nut (8). I would address this problem by disposing a thrust bearing between the top surface of the barrel (3) and the base surface of the component (14) defined by the inner tube (10) and nut (8). Other, less effective, ways in which to address this problem would be to use an anti-friction washer between the surfaces, apply anti-friction coatings to the surfaces, polish the surfaces, and/or ensure that the surfaces are smooth and planar. These were all common approaches for reducing friction between rotating and fixed components of rock bolts prior to April 2008. These were also common engineering practice more generally, to address the well-known engineering principle of friction between rotating and non-rotating parts.”

It is notable that Dr Frith identified these changes to be made to 131232 without the benefit of having seen the opposed application. However, this does not preclude the possibility that Dr Frith may have (inadvertently) used some inventiveness in his analysis.
Mr McCowan states at paragraphs 151and 152 of his declaration:
“... I am surprised Mr Frith favoured his second interpretation. I am unable to identify any markings on the drawings that indicate that the nut 112 and the centre cylinder tube 118 are fixed relative to each other. The end fitting 100 components are defined as separate components through distinct cross-hatching that is separated by a white section. Although, the lines of the cross-hatching of the centre cylinder 118 look similar to the lines of the cross-hatching of the nut 112, they are in fact different for several reasons. First, the lines of the cross-hatching of the nut 112 are denser (there is less space between each line) and second, they extend at a slightly steeper angle relative to the horizontal than the lines of the cross-hatching of the central cylinder 118. Third, each component and the white section are defined by solid lines which denotes that they are indeed separate components. In my view, the drawings illustrated that the nut 112 and the centre cylinder 118 cannot be fixed together to act as a single component and must be separate acting as two components that are moveable relative to one another.
I consider that in Mr Frith's second interpretation he has invented aspects in relation to the '232 Design to rationalise how the end fitting would not only operate but effectively operate.
Although the chain of changes is relatively uncomplicated in retrospect, an uninventive person skilled in the art could not be expected to have foreseen (immediately before the priority date) all of the steps as only routine modifications (as asserted by Mr McCowan at paragraph 152 of his declaration). I consider these necessary changes to have required some level of ingenuity and could not be considered a matter of routine. Consequently the claimed invention is inventive in light of 131232.
Support law
In accordance with s 40(3) of the Patents Act 1990 (Cth), the claims must be supported by matter disclosed in the specification.
As discussed in CSR Building Products Limited v United States Gypsum Company [2015] APO 72 (CSR), with reference to Fuel Oils/EXXON (T409/91) [1994] OJ EPO 653 (Exxon), the requirement for support is that the scope of the claims "should correspond to the technical contribution to the art".
As explained in the Explanatory Memorandum, as considered by Perram J in Encompass Corporation Pty Ltd v Info Track Pty Ltd [2018] FCA 421 the requirement for support is intended to ensure that there is basis in the description for each claim, and that the scope of the claims is not broader than is justified by the extent of the description and the contribution to the art.
The delegate in CSR Building Products Limited v United States Gypsum Company [2015] APO 72 at [115] stated that in assessing support it is necessary to:
i) construe the claims to determine the scope of invention as claimed,
ii) construe the description to determine the technical contribution to the art, and
iii) decide whether the claims are supported by the technical contribution to the art.
Support
The Opponent states at paragraph 126 of their submissions:
“At page 4, lines 14 to 16 of the opposed application, it is stated ''that the problem with known assemblies is that they do not prevent twisting of the cable bolt during tensioning. After a time, the cable bolt can twist back whereby bolt tension is progressively lost" It is clear to Dr Frith that the opposed application is "primarily directed to addressing this problem" Mr McCowan appears to have agreed with Dr Frith, stating ''the Application is directed to the problem of the cable during tensioning". With this statement directly following a sentence discussing prior art assemblies twisting the cable, it is clear that Mr McCowan's statement inadvertently omitted the terms ''twisting of the" or similar, such that it should read" ... the problem of twisting of the cable during tensioning". Mr McCowan them [sic] makes further reference to "the invention directed at preventing twisting of the cable during tensioning".”
The Opponent states at paragraph 129 of their submissions:
“In the described embodiments, the cable bolt is locked against twisting/rotation with respect to the outer housing (18) by way of a hollow insert (32) fastened into the rounded end (28) of the outer housing (18). The insert (32) has ridges (36) that extend into grooves between stands of the cable bolt and ''bite" into the cable bolt. In each of the described embodiments, the outer housing is restrained from rotating by engagement of the rounded end (28) of any of various forms of outer housing (18) with the matching boss (42) of a bearing plate (40), which is stated to in turn be prevented from rotation by being forced against the substrate surface.”
The Opponent states at paragraph 133 of their submissions:
“In light of paragraphs 126 to 131 above, the opposed application makes it clear that, to prevent twisting of the cable bolt during tensioning, the outer housing must be prevented from rotating with respect to the rock strata and the cable bolt must be prevented from rotating with respect to the outer housing. As none of claims 1 to 8 of the opposed application have any features that would prevent the outer housing from rotating with respect to the rock strata and the cable bolt from rotating with respect to the outer housing, none of these claims are supported by the opposed application.”
In summary, the Opponent alleges two features are essential technical contributions of the invention and are not defined in the independent claim: 1) the insert that engages the outer housing to the cable bolt, and 2) the key and slot that engages the outer housing to the bearing plate. I will now consider whether each of these features is an essential technical contribution of the invention.
The insert
What is the insert?
The insert is a means for engaging the outer housing with the cable. The engagement is only partial; it allows the cable to move axially relative to the outer housing, while the relative rotational movement between the outer housing and the cable is prevented.
The insert is described at page 10 line 25 to page 11 line 3 of the description:
“A rounded, tapering “bull-nosed” (alternatively frustoconical) end 28 of the outer housing 18 has a passage 30 therethrough for the cable bolt. A hollow insert 32 is positionable for fastening in a recess defined in the end 28 to surround the passage 30 (with fastening occurring eg. via a weld 34). The insert 32 comprises a number of elongate inwardly projecting protrusions in the form of ridges 36 that are adapted to extend interferingly into grooves defined between adjacent strands 12 of the cable bolt 11 (Figures 3 & 4). In this regard the ridges 36 can “bite” into the cable bolt external surface. This arrangement locks the cable bolt against twisting/rotation with respect to
the outer housing 18.”
The insert allows for the carrier to be rotated while the outer housing is held stationary. Figures 1A, 1B and 2 depict the insert:
Is the insert an essential technical contribution of the invention?
As the cable is tensioned by the assembly, the device potentially undergoes two stages which I will refer to as stage 1 and stage 2.
In stage 1 there is insufficient friction between the outer housing, the bearing plate and the rock face so that the outer housing rotates with respect to the rock face. This means there is no (or insufficient) counteractive force when the carrier is rotated. Without the counteractive force, the carrier and outer housing will rotate together, rather than the carrier being rotated with respect to the outer housing. When there is insufficient friction, the insert is necessary. The insert provides a means for holding the outer member still and thus provides a counteractive force which allows the carrier to be rotated with respect to the outer housing until there is sufficient friction between outer housing and bearing plate which I have called stage 2.
In stage 2 there is sufficient friction between the outer housing, the bearing plate and the rock face so that the outer housing is stationary (does not rotate) with respect to the rock face. This means there is a counteractive force when the carrier is rotated. With the counteractive force, the carrier rotates with respect to the outer housing which would make the insert redundant.
Depending on how the cable bolt is initially installed, the device may need to go either: a) from stage 1 and then stage 2 or b) straight to stage 2. If the assembly is installed loosely on the cable bolt (before any rotational tensioning) such that there is not a firm engagement between the bearing plate and the rock face, the device will need to go through stage 1 and then to stage 2. On the other hand, if the assembly is installed such that the bearing plate is pushed onto the rock face (before any rotational tensioning) such that there is a firm engagement, the installation procedure will go straight to stage 2.
Dr Frith states at paragraph 107 of his first declaration:
Rather than being to prevent the cable bolt (11) from twisting during tensioning, I understand that the outer housing (18) is effectively locked to the cable bolt (11) by way of the ridges (36) of the hollow insert (32) to restrain the outer housing (18) from rotating with the inner housing (19) whilst the inner housing (19) is rotated. The outer housing (18) relies on the torsional rigidity of the cable bolt (11) to restrain it from rotating with the inner housing (18) as it is rotated. Restraining the outer housing (18) allows the inner housing (19) to be unscrewed from the outer housing (18), as is required to tension the cable bolt (11). If the outer housing (18) was not restrained by the torsional rigidity of the cable bolt, friction between the internal thread (20) of the outer housing (18) engaged with the outer thread (21) of the inner housing (19) would cause the outer housing (18) to rotate with the inner housing (19). This would be the case at the beginning of the tensioning process, whilst the outer housing (18) is not otherwise restrained through bearing against the rock face via the bearing plate (40). This only occurs once the tension assembly has been elongated sufficiently to drive the outer housing (18) and bearing plate (40) upwardly into forceful engagement with the rock face. The outer housing (18) thus relies on the torsional rigidity of the cable bolt to allow initial unscrewing of the inner housing (19) from the outer housing (18) to commence the tensioning process. Rather than preventing twisting of the cable bolt, the tension assembly in fact relies on some twisting of the cable bolt and its associated torsional rigidity to initiate the tensioning process.
Mr McCowan states at paragraph 160 of his declaration:
“In relation to paragraph 107, Mr Frith is claiming that the use of the insert will cause twisting of the cable during tensioning as the outer member will not be otherwise restrained and the torque from the carrier will be imparted to the outer member. As stated above, the insert is not an essential component to the assembly. Further, I do not agree that the Application teaches that the insert is required to enable the assembly to function (because the outer member will need to be restrained at the commencement of tensioning). The purpose of the insert is disclosed as being for other means including retaining tension in the cable after tensioning. The Application is very clear that the primary mechanism to retain the outer member from twisting during tensioning is through engagement between the outer member and the plate.”
Dr Frith states at paragraphs 52 and 56 of his second declaration:
It is clear to me that, to initiate the tensioning process, the insert is essential to restrain the outer housing (19), locking the outer housing (19) to the cable bolt (11) so as to use the torsional rigidity of the cable bolt to restrain the outer housing, as discussed at paragraph 107 of my first Declaration. Even after the tensioning process has been initiated, bringing the domed end of the outer housing (19) into bearing engagement with the bearing plate (40) and the bearing plate (40) into bearing engagement with the rock face, and initial tension developed in the cable bolt as a result, it is my understanding that it would only be possible to further restrain the outer member (18) from rotating if:
i.the friction between the bearing plate (40) and the rock face is large enough to prevent the bearing plate (40) rotating with respect to the rock face; and
ii.the friction between the outer housing (18) and the bearing plate (40) is large enough to prevent the outer housing (18) rotating with respect to the bearing plate (40).
With regard to point i. above, based on my experience with tensioning cable bolts, the bearing plate (40) would bear against the rock face and be held in place by the tension applied to the cable bolt (11). It is my understanding that the bearing plate (40) would only be restrained against the rock face once the tensioning assembly has been elongated sufficiently to generate sufficient tension in the cable bolt to force the bearing plate (40) against the rock face with a load generating sufficient friction to restrain the bearing plate (40). Accordingly, it is clear to me that during the initial stages of tensioning the cable bolt (11), there would not be enough tension in the cable bolt (11) to restrain the bearing plate (40) against the rock face and therefore the bearing plate (40) would not be able to restrain the outer housing (18) from rotating with respect to the cable bolt (11) until the tension in the cable bolt (11) increased to a level where the bearing plate (40) would be restrained against the rock face. Rock faces in underground mines are also typically uneven and do not provide a reliable surface to prevent rotation of the bearing plate (40).
With regard to point ii. above, again based on my experience, in the absence of any other feature locking the outer housing (19) to the bearing plate (40), the outer housing (19) would also only bear against the bearing plate (40) and be held in place by the tension applied to the cable bolt. As discussed in paragraph 107 of my first Declaration, it is my understanding that it is only when the tensioning assembly of the '553 Application has been elongated sufficiently to drive the outer housing (18) and the bearing plate (40) into forceful engagement with the rock face would there be enough friction between the bearing plate (40) and the outer housing (18) to prevent the outer housing (18) from rotating with respect to the bearing plate (40) in the absence of the insert (32).
The drill rigs that I understand would be used to unscrew the inner housing (19) from the outer housing (18) would apply a large torque to the outer housing (18). The `553 Application states at page 12, line 22 that a torque of 100-400 Nm would typically be applied. It is clear to me that for the bearing plate (40) to restrain the outer housing (18) during tensioning in the absence of the insert (32) (once the outer housing (18) and bearing plate (40) have been brought into initial bearing contact), the frictional restraint between the bearing plate (40) and the outer housing (18), and between the bearing plate (40) and the rock face, would need to fully counteract the torque applied to the inner housing (19) by the drill rig. I am not convinced that sufficient frictional restraint would be developed to counteract the torque, particularly during the stages of tensioning immediately following establishment of bearing contact between the outer member (18), bearing plate (40) and rock face. I am not aware of any testing having been conducted to determine the frictional restraint that would be developed between these components.
Accordingly, as discussed in paragraph 107 of my first Declaration, it is my opinion that the insert (32) is necessary in order to commence tensioning of the cable bolt (11) using the tensioning assembly of the '553 Application. As discussed in paragraph 107 of my first Declaration, the ridges (36) of the insert (32) are necessary to allow the inner housing (19) to be unscrewed from the outer housing (18) during the initial stages of tensioning the cable bolt (11) where the outer housing (18) is not restrained through forceful bearing against the rock face. Even when the tension assembly has been elongated sufficiently to drive the outer housing (18) and bearing plate (40) upwardly into forceful engagement with the rock face, I am not convinced that sufficient friction would be generated to reliably prevent rotation of the outer housing for the reasons discussed at paragraphs 53 to 55 above. Accordingly, as also discussed in paragraph 107 of my first Declaration, the outer housing (18) relies on the torsional rigidity of the cable bolt (11) by the engagement of the insert (32) with the cable bolt (11) to allow initial unscrewing of the inner housing (19) from the outer housing (18) to commence the tensioning process. Accordingly, during the initial stages of tensioning the cable bolt (11) and potentially throughout the entire tensioning process, it is my understanding that the torque applied to the inner housing (19) would be partially imparted to the outer housing (18) through the friction between the threads of these two components. The torque imparted onto the outer housing (18) would be imparted onto the cable bolt (11) due to the hollow insert (32), which would tend to twist the cable bolt (11).
Mr McCowan and Dr Frith do not agree on whether there would be sufficient friction between the bearing plate and the rock face such that the installation of the assembly could begin at stage 2.
The specification describes two alternatives in the initial installation of the bolt and assembly at page 12 lines 3 to 19:
“The configuration of the tensioning assembly 10 is such as to allow the assembly 10 to be located on the cable bolt 11, either prior to or after anchoring the cable bolt 11 in the bore B.
If the assembly 10 is to be preassembled on the cable bolt, the components may be positioned on the cable bolt and the barrel 14 and wedges 16a, 16b, and 16c are pretensioned so as to be caused to clamp onto the cable bolt. The outer and inner housing can then overlay the pretensioned barrel and wedge and may be held in place for transport by a plastic film or a settable polymeric or mastic wrap or through use of mechanical fasteners such as ties or grub screws or the like or by a combination of the foregoing.
Alternatively, the assembly 10 can be slid onto the end of the cable bolt after the bolt has been installed. Once in position the barrel 14 and wedges 16a-16c may then be caused to clamp the cable by inducing relative movement between the barrel and wedges.
Once the cable bolt 11 is point anchored in the bore B of mine shaft roof R and the tension assembly 10 is in place on the cable bolt 11, the assembly is ready for tensioning, as illustrated in Figure 3.”
I will now consider each of these alternatives: a) Pre-assembled on the cable bolt, b) Assembly put on after the cable bolt.
Pre-assembled on the cable bolt
To install the cable bolt with assembly already attached, the bolt would be pushed into the bore until the bearing plate engages with the rock face. It is possible that in such an installation the bearing plate could be pushed hard enough against the rock face such that there would be sufficient friction to begin the tensioning of the device at stage 2.
Assembly put on after the cable bolt
To install the cable bolt without the assembly already attached, the bolt is first inserted into the bore and the assembly is then slid onto the exposed end of the cable bolt until the bearing plate was pressed against the rock face. The wedges are then placed between the barrel and the cable bolt and force applied to the wedges until the cable is clamped. Presumably, the force would be in the form of an impacting device (such as a hammer) or a continuous force device (such as a hydraulic ram). It is possible that the process of applying force to the wedges would push the bearing plate firmly against the rock face such that there would be sufficient friction begin the tensioning of the device at stage 2.
Conclusion on whether the insert is an essential technical contribution of the invention

The insert is only an essential technical contribution of the invention if the assembly is too loosely engaged with the rock face. I have found that both alternatives of installing the assembly (either when the assembly is pre-assembled on the cable bolt, or when the assembly is attached after the cable bolt has been installed) could be installed firmly enough to engage with the rock face such that the insert was unnecessary.
Since the invention can be practically operated in such a way the insert is unnecessary, I consider that the insert is not essential and is not the technical contribution of the invention. Instead, I consider the insert is a useful backup or failsafe feature in the case where the assembly has not been installed with sufficient force and there is insufficient friction between the bearing plate and the rock face.
Key and slot
What is the key and slot?
The description states at page 14 lines 8 to 13:
“In the above described embodiments, the outer housing 18 is prevented from rotating by frictional contact with the boss 42 of the bearing plate 40 (which, in turn, is prevented from motion by being forced against the substrate surface S). Figures 5 through 14 illustrate further embodiments of the invention showing various different ways in which the outer housing 18 and bearing plate 40 may interact to facilitate prevention of rotation of the outer housing 18.”
One way for the outer housing and bearing plate to interact is with a key and slot illustrated in figures 5A, 6A and 7A:
Is the key and slot an essential technical contribution of the invention?
The key and slot is only necessary if there is insufficient frictional engagement between the outer housing and the bearing plate such that there is a counteractive force so that the carrier can be rotated relative to the outer housing.
Similarly with the analysis of the insert, although the key and slot is a useful backup/failsafe feature in case the assembly is not initially pressed onto the rock face firmly enough, I do not consider the key and slot to be an essential technical contribution of the invention.
Conclusion on support
I have found that neither of: 1) the insert that engages the outer housing to the cable bolt, or 2) the key and slot that engages the outer housing to the bearing plate, are an essential technical contribution of the invention. Consequently, the absence of these features in the claim does not lead to a finding of lack of support. The claims are supported by the description.
Utility law
Section 7A of the Patents Act 1990 (Cth) requires that the invention (so far as claimed) is useful. In Ranbaxy Australia Pty Ltd v Warner-LambertCoLLC [2008] FCAFC 82 at [141] it was stated that "the invention as claimed must attain the result promised by the patentee".
In Streetworx Pty Ltd v Artcraft Urban Group Pty Ltd [2014] FCA 1366 at [340], Beach J
proposed a three-question test when considering utility:
i. What has the patentee promised for the invention as described in the relevant claim?
ii. Is the promise useful?
iii. Has that promise been met?
In Ronneby Road Pty Ltd v ESCO Corporation [2016] FCA 588 it was established that if a specification made multiple promises, the claims have to fulfil each of the promises, otherwise the claims would fail for inutility.
It was also established by the Full Federal Court in H LundbeckAJS v Alphapharm Pty Ltd [2009] FCAFC 70 that:
“A claim is bad if it covers means that will not produce the desired result, even if a skilled person would know which means to avoid. That is to say, everything that is within the scope of a claim must be useful, otherwise the claim will fail for inutility.”
Utility
The Opponent states at paragraph 142 of their submissions:
“...[K]nown tensioning assemblies do not "prevent the cable bolt from twisting during tensioning. After a time, the cable bolt can twist back whereby bolt tension is progressively lost". This is clearly the key problem of the prior art that the patent applicant has promised to overcome.”
The Opponent states at paragraph 143:
“...[T]he opposed application states that if the cable bolt is "prevented from twisting with respect to the rock substrate ... the tensile force that is induced in the cable bolt 11 will be retained therein over time (ie. the bolt does not untwist over time to release the tension therein. Accordingly, if the alleged invention is able to satisfy the above promise, it is stated that a cable bolt tensioned using the alleged invention will not tend to untwist after being tensioned therefore losing tension in the cable bolt. If this is in fact the case, the promise is useful.”
The Opponent states at paragraph 144:
“...[I]t is clear to Dr Frith "that for the tensioning assembly of the '553 Application to be able to operate whilst also solving the stated problem of preventing twisting of the cable bolt (11) during tensioning, there would have to be:
a. Zero friction between the shoulder (25) of the inner housing (19) and the barrel (14);
b. Very high friction between the bearing plate (40) and the rock face; and
c. An interlocking feature such as a key, or very high friction between the outer housing (18) and the bearing plate (40)"
The Opponent goes on to state at paragraph 148 of their submissions:
“Dr Frith recognized that inclusion of the anti-friction washer (44) or the thrust bearing (26) would reduce the friction between the inner housing (19) and the barrel (14), but would "not completely eliminate friction" and that "some torque would still be transferred from the shoulder (25) of the inner housing (19) through the anti-friction washer (44) or thrust bearing (26) to the hollow barrel (14) and cable bolt (11). Therefore the cable bolt (11) would still be twisted during tensioning". Dr Frith also explained ''that twisting of the cable bolt (11) will increase as the tension load applied to the cable bolt (11) increases during tensioning" and ''that the anti-friction washer (44) and the thrust bearing (26) will only reduce twisting of the cable bolt (11) during tensioning, but will not prevent twisting of the cable bolt (11), especially when the tension loads in the cable bolt (11) increases'" Mr McCowan acknowledges that the use of an anti-friction washer or thrust bearing only "limits friction between the carrier member and the outer member during operation of the assembly"”
The Applicant states at paragraph 119 to 120 of their submissions:
“The starting point is that the purpose of preventing twisting is to address the problem of losing tension in the bolt (see the Application at p4, lines 14 - 16). There is no suggestion that the purpose does not require that there be no twisting at all, or "zero" torque. Consistently with this, the specification contemplates that "minimal" twisting is within the scope of the invention and achieves its purpose (see the Application at p6, lines 17 - 20). This is conceded in OS [12] - [13]. Also, consistently with this, the purpose of the invention is described as "restraining" twisting p 6, line 17; p 7 lines 22, the natural meaning of which includes keeping within limits, not necessarily completely eliminating.
A first difficulty with OS is that the submissions appear, at least occasionally, to characterize the promise of the invention inappropriately, as does Mr. Frith (see Frith #2 at [59] - [63]. That, for example, conspicuously occurs in relation to claim 3 (OS [144] - [145]), which incorporates a thrust bearing. For the reasons given in relation to the support ground, the promise of the invention is not to produce "zero" twisting or torque, but to restrain twisting, that is to limit it, so as to prevent the problem of losing tension. The invention as claimed should be addressed against that proper characterization of the promise.”
The description states at page 6 lines 17 to 23:
“When the clamping device is caused to fasten to the bolt it can allow the assembly to apply tension thereto. When rotation of the outer member is restrained or prevented such tensioning can occur with minimal or no bolt twisting with respect to the rock strata. Thus, the cable bolt can better retain tension therewithin over time, thereby providing for more secure rock strata support over time. Further, in contrast to prior tensioning assemblies, cable bolt tensioning can occur without inducing or requiring bolt rotation.”
The issue of whether the insert is essential to the invention (considered above in relation to support under s 40(3)) is closely related to the issue of whether the cable is twisted as the cable bolt is tensioned (now considered under s 7A). This is because when the insert provides a counterforce as the carrier is rotated (referred to as stage 1) then there will be some twisting on the bolt. Once the device installation enters stage 2, no significant further twisting will be applied to the bolt. I have found that the insert is not essential to the invention and the device can be operated such that the bolt begins tensioning directly at stage 2. It follows that there is no significant twisting when the bolt is tensioned.
I further consider that the promise of the invention is to minimise, rather than completely eliminate, the bolt twisting as it is tensioned. I am satisfied that the invention achieves the promise. Consequently the invention meets the requirement of utility.
Clarity law
The rules of construction for an Australian patent specification are well summarized in Decor Corp v Dart Industries 13 IPR 385. Recently the correct application of these rules 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.”
Where it is impossible to ascertain the scope of invention the claims should be found to lack clarity (see Decor Corp v Dart Industries 13 IPR 385 at 400).
Clarity
The ground of clarity was not raised in the Statement of Grounds and Particulars. Pursuant to s 60(3) I may consider grounds that were not relied upon by the Opponent.
During the hearing the Opponent noted that claim 7 had problems with the antecedence and appendancy. Specifically, the claim refers to the “carrier member recess” which is a feature that was first defined in claim 6. However the claimed appendancy is “An assembly as claimed in any one of claims 2 to 6”. Thus there is no antecedent to the “carrier member recess” when the claim is appended to claims 2 to 5.
The Applicant conceded in the hearing that claim 7 had been incorrectly appended. I consider both the error and the intended meaning of the claim to be readily apparent. Consequently I do not consider the claim to be so unclear as to be invalid under s 40(3).
At the hearing the Applicant made an undertaking to amend the claim to remove the superfluous appendancy.
Conclusion
The opposition fails on all grounds raised in this opposition. I will delay the proceeding to grant by one month to allow the Applicant time to propose amendments to correct the aforementioned superfluous appendancy. Following this delay of one month, and subject to appeal, I direct the application proceed to grant.
Costs
Typically costs follow the event. In the present case, there is one circumstance that could cause a departure from that principle – the specification was amended during the opposition.
The amendment was to the description only and was not made to overcome a ground of opposition. Furthermore, the amendment had no effect on the outcome of the opposition. Consequently, a departure from the usual practice of costs following the event is not warranted.
I award costs against the Opponent, DYWIDAG-Systems International Pty Limited, according to Schedule 8.
Xavier Gisz
Delegate of the Commissioner of Patents