ESCO Corporation v Southern Engineering Services Pty Ltd - [2014] APO 84

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
ESCO Corporation v Southern Engineering Services Pty Ltd [2014] APO 84

Patent Application: 2012200898
Title:Tool system and tool for mining machine

Patent Applicant:                   Southern Engineering Services Pty Ltd
Opponent:  ESCO Corporation
Delegate:  Dr N. R. Madsen
Decision Date:  17 December 2014
Hearing Date:  Written submissions completed on 28 November 2014
Catchwords:  PATENTS – opposition to the allowance of amendments under subsection 102(1) and paragraph 102(2)(b) of the Patents Act 1990 – amended claims in substance disclosed – amended claims comply with subsection 40(3), fair basis – amendment allowed – costs in accordance with Schedule 8 awarded against the opponent.

Representation: Patent applicant: FB Rice, Sydney, NSW
Opponent:Minter Ellison Lawyers, Melbourne, Victoria

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2012200898

Title:Tool system and tool for mining machine

Patent Applicant: Southern Engineering Services Pty Ltd
Date of Decision: 17 December 2014
DECISION
I have found that the proposed amendments satisfy the requirements of subsection 102(1) and paragraph 102(2)(b) of the Patents Act 1990, and consequently the opposition fails on all grounds. Subject to appeal I allow the amendments.
I award costs against ESCO Corporation.
REASONS FOR DECISION
Background

Patent application 2012200898 was filed on 16 February 2012 by Southern Engineering Services Pty Ltd (the applicant). Examination was requested on 26 March 2012 after which time the application proceeded to acceptance and was advertised as accepted.
A notice of opposition to grant of a patent, and statement of grounds and particulars was filed in the name of ESCO Corporation (the opponent). Evidence in support and answer were completed. Evidence in answer was completed on 27 November 2013. The following day the applicant filed a request to amend the specification under section 104 of the Patents Act. Evidence in reply was completed on 27 February 2014.
A delegate of the Commissioner of Patents granted leave to amend the specification and the amendments were advertised. A notice of opposition to the allowance of amendments was filed by the opponent on 6 May 2014 and a statement of grounds and particulars was filed on 6 June 2014. The grounds of opposition specified in the statement of grounds and particulars are that the amendments do not comply with subsection 102(1) and paragraph 102(2)(b). The request to amend the patent specification is the subject of this decision.
No evidence was filed by either of the parties. A delegate of the Commissioner directed the parties on 24 October 2014 that they will be heard on the basis of written submissions. The opponent filed written submissions on 7 November 2014 while the applicant filed responding written submissions on 21 November 2014. The opponent filed written submissions in reply on 28 November 2014. I will provide the details of written submissions filed by the parties as necessary in the later paragraphs.
The invention described in the specification
The present invention (see page 1 of the specification) relates to a tool and tool system primarily for coal mining and iron ore mining machines. Known tool systems typically include a tool holder and a cutting tool which mounts within the holder. The cutting tool typically includes a shank which is held within a socket in the tool holder. Such tool systems are themselves mounted on a drum typically in a helical pattern. A problem with known systems is that it can be difficult to replace a failed cutting tool, particularly when tool failure occurs in the shank of the cutting tool.
The tool system of the present invention is particularly characterised by the features of: a laterally extending flange between the mounting end and the cutting end of the cutting tool, the flange being engageable by a lever to facilitate removal of the cutting tool from the tool holder; and a line of weakness in the cutting tool defining a predetermined failure point, the line of weakness being positioned on the cutting end side of the flange, such that the cutting tool is adapted to fail at a position that leaves the flange intact.
The Amendments
The specification before amendment contained 22 claims with claims 1 and 11 being the independent claims. The statement of proposed amendment filed on 28 November 2013 amends a number of claims (to now leave 23 claims). Relevant to the present opposition is the addition of new claim 10, which in its broadest form appends to claim 1. The relevant proposed amendment relating to these claims is reproduced below whereby added text is underlined.
1. A tool system comprising a tool and a tool holder,
the tool holder comprising:
a body having a socket therein;
the tool comprising:
a cutting end for winning mineral from an ore body,
a mounting end comprising a shank complementary with and engageable in the socket, a laterally extending flange between the mounting end and the cutting end, the flange being engageable by a lever to facilitate removal of the tool from the tool holder, and a line of weakness in the tool defining a predetermined failure point, the line of weakness being positioned on the cutting end side of the flange, such that the tool is adapted to fail at a position that leaves the flange intact.
…
10.A tool system according to any one of the preceding claims, comprising a laterally extending space defined between the flange and an opposing upper surface of the tool holder, such that said lever can be inserted laterally into the space and rotated to engage both the flange and the upper surface of the tool holder to facilitate removal of the tool from the tool holder.
Law Relating to Amendments
As the request for examination of the patent application was filed before 15 April 2013, substantive amendments of the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 do not apply to the present patent application. This includes an amendment to subsection 102(1) which precludes the inclusion of subject matter extending beyond the original disclosure.
The relevant sections of the Patents Act in the current case are sections 102(1) and (2) as they existed prior to the introduction of the Raising the Bar Act. These are set out below:
(1)An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim matter not in-substance disclosed in the specification as filed.
(2)An amendment of a complete specification is not allowable after the relevant time if, as a result of the amendment:
(a) a claim of the specification would not in-substance fall within the scope of the claims of the specification before amendment; or
(b) the specification would not comply with subsection 40(2) or (3).
(2A) For the purpose of subsection (2), relevant time means:
(a) in relation to an amendment proposed to a complete specification relating to a standard patent - after the specification has been accepted.
(3)This section does not apply to an amendment for the purpose of correcting a clerical error or an obvious mistake made in, or in relation to, a complete specification.
The applicable parts of section 40 of the Patents Act 1990 as they apply to the present case are set out below:
(2)A complete specification must:
(a) describe the invention fully, including the best method known to the applicant of performing the invention; and
(b) where it relates to an application for a standard patent – end with a claim or claims defining the invention.
(3)The claim or claims must be clear and succinct and fairy based on the matter described in the specification.
It is plain from the wording of section 102 that the test provided by this section of the Patents Act is confined to matters which arise as a result of amendment (see Kornelis’ Kunsthars Producten Industrie BV v WR Grace & Co-Conn (1994) AIPC 91-056 at 38,204). Consequently any pre-existing deficiencies in the specification which are unaffected by amendment are irrelevant to the present action.
Subsection 102(1): In-substance Disclosed in the Specification as Filed
When determining whether a matter is in substance disclosed in the specification as filed, the courts have basically applied the test for fair basis. Thus for an amended claim to claim matter in substance disclosed in the specification as filed, the amended claim must be fairly based on the specification as filed (see United-Carr Incorporated's Application [1971] RPC 23, RGC Mineral Sands Pty Ltd v Wimmera Industrial Minerals Pty Ltd (1998) 42 IPR 353).
Under Section 40(3), fair basis is “concerned purely with the relationship between the body and claims of the one specification.” (Lockwood Security v Doric Products [2004] HCA 58; 217 CLR 274; 212 ALR 1; 79 ALJR 260). As was noted in Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8; 207 CLR 1; 177 ALR 460; 75 ALJR 518 “a comparison between the matter described in the specification and the claim which defines the scope of the monopoly”, following the reasoning of Barwick CJ in Olin Corporation v Super Cartridge Co Pty Ltd [1977] HCA 23; (1994) 180 CLR 236 when he said:
“The question whether the claim is fairly based is not to be resolved ... by considering whether a monopoly in the product would be an undue reward for the disclosure. Rather, the question is a narrow one, namely whether the claim to the product being new, useful, and inventive, that is to say, the claim as expressed, travels beyond the matter disclosed in the specification.”
As was noted in Lockwood (supra):
“the statutory test as expounded by Barwick CJ does not call for any evaluation of whether the breadth of the claims exceeds "the technical contribution to the art embodied in the invention", merely for an evaluation of whether the claims travel beyond the matter described in the specification”
I also note that it was said in Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd [1988] FCA 162 at [54]:
“The circumstance that something is a requirement for the best method of performing an invention does not make it necessarily a requirement for all claims; likewise, the circumstance that material is part of the description of the invention does not mean that it must be included as an integer of each claim. Rather, the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification”
This was cited with approval in Lockwood (supra).
The opponent alleges that amended claim 10 claims matter not in substance disclosed in the specification as accepted (prior to the amendment) in regard to the feature of an opposing upper surface of the tool holder, such that said lever can be … rotated to engage … the upper surface of the tool holder. Relevant parts of the specification prior to amendment are reproduced below and include the text of the description from page 5 line 35 to page 6 line 13, and figure 2.
“As shown in Fig. 2, the tool 14 comprises a laterally extending flange 14d that is engageable by a lever to facilitate removal of the tool 14 from the tool holder 12. A line of weakness, in the form of a groove 44, is provided in the tool to define a predetermined failure line extending laterally across the tool 14. The line of weakness 44 is positioned so as to facilitate failure of the tool 14 at a location that does not unduly inhibit removal of the tool 14 from the tool holder 12. Specifically, the line of weakness is positioned above the laterally extending flange 14d, such that the tool 14 is adapted to fail at a position that leaves the laterally extending flange 14d intact, so that a lever can be engaged with the flange 14d even if the tool 14 has failed.
As shown in Fig. 2, the tool holder 12 has an abutment surface 12f that is engaged by a corresponding abutment surface 14f of the tool 14 when the tool shank 18 is fully engaged with the socket 20. The laterally extending flange 14d is spaced apart from the abutment surface 14f of the tool 14, and from the tool holder 12, toward the cutting end of the tool, so as to define a space 80 for insertion of a lever to engage the flange 14d to facilitate removal of the tool 14 from the tool holder 12.”
The opponent argues that the relevant passages disclose that removal of the tool 14 is merely facilitated by engagement of a lever with the laterally extending flange 14d. The opponent adds that:
“… [the] passage does not mention any ‘opposing upper surface of the tool holder’ at all. Logically, then, it could not (and does not) describe that the lever engages with such an opposing upper surface of the tool holder.
In contrast, the teaching of the above passage of the Opposed Application is to provide sufficient clearance between the flange and tool holder such that the flange can be engaged by a lever. The clearance is to prevent the tool holder from interfering with the engagement of the lever with the flange. In particular, the Opposed Application states that the flange should be sufficiently spaced from the tool holder ‘so as to define a space 80 for insertion of a lever to engage the flange 14d’.
…
Accordingly, the Opposed Application teaches that, as long as this clearance is provided, other details of the lever are not important. For example, the fulcrum of the lever could be on another part of the apparatus, or on a separate removal device.”
…
The drawings of the Opposed Application are of no assistance to the Applicant. None of the drawings depict a lever at all, let alone engagement of such a lever with any part of the tool system.”
I accept the opponent’s argument that there is no explicit written disclosure of the relevant feature within the specification prior to amendment. However, it is well established that subsection 102(1) does not require a disclosure to the level required by a prior art anticipation. Instead s102(1) only requires consistency between the claims and the body of the specification in the form of a “real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification” as noted in Rehm Pty Ltd (supra). Alternatively, as noted in Lockwood (supra), the test merely calls for “an evaluation of whether the claims travel beyond the matter described in the specification”.
The specification prior to amendment clearly teaches a tool with a flange 14d and a space 80 between the flange and the tool holder. As depicted in figure 2, opposing the flange on the other side of the space 80 is an upper surface of the tool holder. The description adds that a lever can be inserted into this space for removal of the tool from the tool holder. While the specification prior to amendment does not disclose where the fulcrum point for the lever is, I consider it clear that a skilled addressee would consider that the body of the specification generally suggests that a fulcrum will necessarily be either the upper surface of the tool holder or potentially, some external point.
In my view, the feature of an opposing upper surface of the tool holder, such that said lever can be … rotated to engage … the upper surface of the tool holder does not travel beyond the matter described in the specification. The capability of a lever to use an upper surface of the tool holder as a fulcrum point is entirely consistent with the original disclosure which provides a space in which a lever can be inserted, whereby the specification suggests generally to the skilled addressee that the fulcrum point could be the upper surface of the tool holder or another point. I see no basis for the assertion of the opponent that the space 80 is to prevent the tool holder from interfering with the lever. The relevant disclosure that the space is “for insertion of a lever to engage the flange” does not preclude contact with an upper surface of the tool holder as a fulcrum point.
Therefore, I find the amended claims meet the requirements of sub-section 102(1) and the opposition fails on this ground.
Paragraph 102(2)(b): Comply With Subsection 40(3)
Claims must be clear and succcinct and fairly based on the matter described in the specification
In relation to this ground of opposition, the statement of grounds and particulars alleges that the claims as proposed to be amended are not fairly based on the matter described in the specification. Importantly I note that in relation to the subject matter of new claim 10, the body of the specification before and after amendment is identical. Thus the relevant law and submissions filed by the parties in relation to the ground under subsection 102(1) apply equally to a consideration of fair basis in relation to paragraph 102(2)(b). As I have found that the amendment complies with subsection 102(1) it must follow that the amendment also complies with paragraph 102(2)(b).
Conclusion
The amendment complies with the requirements of subsection 102(1) and paragraph 102(2)(b). The opposition is unsuccessful.
Costs
Ordinarily in proceedings such as these, costs follow the event. I see no reason that warrants varying this approach. Therefore, I award costs in accordance with Schedule 8 of the Patents Regulations against the opponent.

Dr N. R. Madsen
Delegate of the Commissioner of Patents