Function Chains Pty Ltd v Peerless Chain Company
[2015] APO 57
•25 August 2015
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Function Chains Pty Ltd v Peerless Chain Company [2015] APO 57
Patent Application: 2006244311
Title:Debarking chain with passing links
Patent Applicant: Peerless Chain Company
Opponent: Function Chains Pty Ltd
Delegate: R Subbarayan
Decision Date: 25 August 2015
Hearing Date: 3 June 2015 in Perth
Catchwords: PATENTS - section 59 - opposition to grant of patent – flail chain for debarking trees – shape of chain link - whether claims are novel – whether claims are inventive – whether claims are clear – whether claims are fairly based – none of the grounds made out – costs awarded
Representation: Patent applicant: FB Rice
Opponent:Richard Baddeley of Watermark Patent and Trade Marks Attorneys
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2006244311
Title:Debarking chain with passing links
Patent Applicant: Peerless Chain Company
Date of Decision: 25 August 2015
DECISION
None of the grounds of the opposition have been made out. The claimed invention is novel, inventive, clear and fairly based. I direct that the application proceed to grant subject to any appeal. I award costs according to schedule 8 against the opponent, Function Chains Pty Ltd.
REASONS FOR DECISION
BACKGROUND
Application 2006244311 in the name of Peerless Chain Company (the applicant) was filed on 12 April 2006 as a PCT application (PCT/US2006/014157). It claims an earlier priority date of 13 April 2005 from priority application US 60/671012. It was advertised as accepted on 28 June 2012. Function Chains Pty Ltd (the opponent) filed a notice of opposition to the grant of the patent under section 59 of the Patents Act on 28 September 2012. This was followed by the Statement of Grounds and Particulars (SOGAP) that was filed on 20 December 2012. On 12 May 2015, the opponent filed an amended SOGAP, the main amendment being the inclusion of document D8, which was already in evidence, under the ground of Novelty. The matter was heard in Perth on 3 June 2015. The applicant appeared through written submissions, in which they objected to the introduction of document D8 as they had not had an opportunity to file evidence in relation to this document. As document D8 was already in evidence, I allowed the opponent to make submissions in relation to this document and after the hearing I gave the applicant an opportunity to file any further evidence or submissions in relation to this document. The applicant responded with written submissions filed on 19 June 2015.
GROUNDS OF OPPOSITION
The SOGAP lists the grounds of opposition as Novelty, Inventive Step, Clarity and Fair Basis and all four grounds were pressed at the hearing.
SPECIFICATION
The specification states that the invention relates to a flail-type debarking chain for use in removing bark and small limbs from logs before the logs are sent to a wood chipper to be chipped into small pieces. Sets of such debarking chains are attached to a rotatable drum of a debarking device. In use when the drum is rotated, the chains strike the log and remove the bark and any small limbs that may still be attached to the trunk. For effective debarking, the chains must reach at least the midpoint of the sides of the log. A typical debarking device with sets of debarking chains 226 attached to a debarking drum 222 is shown in figure 3 that is reproduced below:
The debarking chains typically consist of a plurality of “elongated or oblong chain links” 234 of which the outer links are the ones that are subject to most wear as these links “repetitively strike the outer surface of the logs and as these links strike each other when the links recoil following such impacts”. Due to the elongated shape of the links, most of the wear occurs at the inside and outside surfaces of the rounded portion in the U-shaped end of each link, especially in the second and third links from the end closest to the log. In normal use, the chains will be “used for a predetermined amount of time or until any links are worn to a predetermined amount of wear” and then “disconnected, flipped end to end, before being reattached and used again for another set of time or predetermined amount of wear” before they are replaced.
If the chains break during use, they have the potential to damage the chipper leading to machine downtime and additional operating costs. Operators therefore “avoid extending the use of a set of debarking chains beyond the projected wear life for the chains”.
The specification states that the present invention addresses “a practical need to increase the projected debarking chain wear life, thereby reducing chain replacement cost per unit of processed wood products, along with associated costs of replacement materials and machine downtime”.
The specification notes that the reason that the second and third links are subject to most wear is that unlike the end link, these links “do not readily change orientation, turn or rotate with respect to each other during use, and wear and stress from the impact of the respective links 34 is generally concentrated in the rounded, u-shaped ends of these oblong links”. It states that the present invention attempts to “more equally distribute the stress and wear associated with the repetitive impact to the entire inner and outside perimeter of links along the length of a debarking chain and particularly along the inner and outer perimeter of the second and third links at the end of each chain where the wear and stress of such impacts is concentrated”.
The solution proposed by the specification is to include at least one “passing” link 240 in each debarking chain wherein the “passing” link is defined as “a chain link that can substantially rotate, substantially turn or substantially change its orientation with respect to any immediately adjacent link or links during use as one of a series of links in a debarking chain, when the chain is used as a debarking chain in a flailing or debarking operation”. By changing its orientation, a passing link will “thereby vary its point of engagement with any adjacent links to which it is interconnected, such that any impact, wear or stress upon the link due to interaction with such adjacent links occurring during such flailing or debarking operations will be distributed over a range of impact or wear points along the inner and outer perimeter of the link”.
In a preferred embodiment a passing link is made as a substantially round chain link as “substantially round links can randomly pass through adjacent links, turning its orientation with respect to such links thereby randomly changing the wear or impact point where the respective adjacent or next to adjacent links engage the passing link during repeated flailing events during debarking operation”. Such random turning or reorientation of the passing link with respect to its adjacent links will result in the wear being more evenly distributed along the entire perimeter of the link, thereby extending the debarking chain wear life as compared to standard chains consisting of only elongated oblong links.
Preferred methods of manufacturing such rounded links are then described. In one such method one or more elongated or oblong links of welded steel used in typical flail chains, are “bumped” or struck or pressed with sufficient force at one or both ends so that the long straight sides of the elongated link will bend outwardly to form arcuate regions thereby creating a substantially round link.
The specification also states that it can be “difficult to cost effectively make a perfectly round chain link” and that in some embodiments the passing link can have at least three arcuate sections that are separated from each other by non-arcuate sections so that the link is less than substantially round. One such embodiment is that of figure 11C reproduced below, which shows a passing link 940 having a squarish inner perimeter with arcuate regions 944 separated by straight surfaces 946.
The specification also discusses comparative test results for prototypes of the debarking chain that were made by bumping the elongated links so as to round the straight sides of the links so that the links became substantially rounded, but acknowledges that the prototype links “were somewhat square, which limited the freedom to rotate and reduced the benefit of rotating”. Despite this, the test results show that the prototype chains performed better than chains with elongate links and had the most number of chipping loads after flipping.
A typical debarking apparatus employing chains with passing links is also then described.
The specification ends with 21 claims of which the independent claims are reproduced below. It is worth noting that all of the claims are directed to the embodiment of figure 11C with an inner perimeter that is less than substantially round rather than the more preferred form of links with a substantially round inner perimeter.
- A debarking chain configured for attachment to a debarking drum, the debarking chain comprising:
a plurality of interconnected chain links, each chain link being a continuous strand of chain material surrounding and defining a central opening through which the continuous strand of any adjacent, interconnected chain links passes, the plurality of interconnected chain links including at least one passing link, each at least one passing link being constructed and arranged to permit the passing link to turn with respect to both adjacent chain links in such a manner that allows wear and stress on the passing link created by impact from adjacent or next to adjacent chain links to be distributed about inner and outer perimeters of the passing link, the inner perimeter of each passing link including at least three arcuate sections, each arcuate section separated from the other by non-arcuate sections, such that the inner perimeter is less than substantially round.
- A debarking chain configured for attachment to a debarking drum, the debarking chain comprising:
a plurality of interconnected chain links including two end links and a plurality of intermediate links that interconnect with each other and the respective end links so that each of the end links are interconnected only with a single intermediate link, each chain link being a continuous strand of chain material surrounding and defining a central opening through which the continuous strand of any adjacent, interconnected chain links pass;
wherein the plurality of intermediate links are each a passing link, such that the intermediate links are constructed and arranged to permit each passing link to turn with respect to both adjacent chain links in such a manner that allows wear and stress on the passing link created by impact with adjacent or next to adjacent chain links to be distributed about inner and outer perimeters of the passing link;
wherein the inner perimeter of each passing link includes at least three arcuate sections, each arcuate section separated from the other by non-arcuate sections, such that the inner perimeter is less than substantially round.- A debarking chain configured for attachment to a debarking drum, the debarking chain comprising:
a plurality of interconnected chain links including two end links and a plurality of intermediate links that interconnect with each other and the respective end links so that each of the end links are interconnected only with a single intermediate link, each chain link being a continuous strand of chain material defining a central opening through which the continuous strand of any adjacent, interconnected chain links pass, the plurality of intermediate links including at least one passing link;
wherein an inner perimeter of each at least one passing link includes at least three arcuate sections, each arcuate section separated from the other by non-arcuate sections, such that the inner perimeter is less than substantially round;
wherein the plurality of interconnected chain links include at least one drum attachment chain link, the at least one drum attachment chain link comprising one end link of the debarking chain and being constructed and arranged to be securable to the debarking drum.EVIDENCE
Evidence in Support comprises the following:
a. Declaration of John Wallingford with exhibits JW-1 to JW-6 dated 14 June 2013 (Wallingford);
b. Declaration of David Thomas Quill with exhibits DTQ-1 to DTQ-10 dated 4 November 2013 (Quill);
c. Declaration of Simon Cox with exhibits SC-1 and SC-2 dated 19 September 2013 (Cox)Evidence in Answer comprises the following:
d. Declaration of John McCauley (named inventor of the opposed application) with exhibits JMC-1 to JMC-5 dated 2 May 2014 (McCauley #1)
e. Declaration of Les Walkden with exhibit LW-1 dated 2 May 2014 (Walkden)Evidence in Reply comprises the following:
f. Declaration of Jinhuan Huangfu with exhibits JH-1 and JH-2 dated 7 April 2014 (Huangfu#1)
g. Declaration of Shriraj Suresh Takle with exhibits SST-1 and SST-2 dated 4 August 2014 (Takle)
h. Declaration of Jinhuan Huangfu with exhibit JH-1 dated 4 August 2014 (Huangfu #2)ONUS OF PROOF
The examination request for this patent application was filed prior to 15 April 2013. As a consequence, 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 application. This includes the amendment to subsection 60 (3A) that allows the Commissioner to refuse a patent application if satisfied on the balance of probabilities that a ground of opposition exists.
Consequently the former standard for opposition proceedings applies and the opponent must establish that it is clear or practically certain that the patent is invalid (F Hoffman La Roche AG v New England Biolabs Inc [ 2000] FCA 283 at [29] , [67]; [2000] FCA 283 ; 50 IPR 305 at 311, 319; Commissioner of Patents v Sherman [2008] FCAFC 182 at [18] , [22]; [2008] FCAFC 182 ; 79 IPR 426 ; Genetics Institute Inc v Kirin-Amgen Inc [1999] FCA 742 ; [1999] 92 FCR 106 at [17] ).
CLAIM CONSTRUCTION AND CLARITY
The principles to be applied in claim construction are well established (Flexible Steel Lacing Company v Beltreco Ltd [2000] FCA 890; 49 IPR 331 at [70] – [81], Pfizer Overseas Pharmaceuticals v Eli Lilly and Company [2005] FCAFC 224; 68 IPR 1 at [247]- [250], H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70 at [52]- [54]). Of particular note is that the words used in a claim are to be given the meaning a skilled person would attach to them, having regard to their own personal knowledge and to textual disclosures in the body of the specification which, together with the claims, must be read as a whole. Thus the use of an imprecise term in a claim does not give rise to ambiguity, so long as it can be understood in a practical, commonsense manner.
I also note that the requirement that the claims are clear is understood to be satisfied if a person could ascertain "whether or not what he proposes to do falls within the ambit of the claim" (Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59).
The use of imprecise terms like "substantial" in a claim does not, of itself, result in lack of clarity. What is substantial is a question of degree but such imprecision does not necessarily give rise to ambiguity (Monsanto at 60 per Stephen J).
Further as explained by Blanco White, Fifth Edition, at 2-012:
"If draftsmen and judges were perfect 'substantially' would have no effect; as it is, the indication is often a useful one. But the word can only mean 'nearly enough for the patentee's purposes', unhelpfully unless the body of the specification tells the reader what those purposes are and what sort of precision is needed to achieve them."
The opponent submitted that the scope of the independent claims is indeterminate due to the lack of clarity of the following terms:
Inner perimeter
I can find nothing unclear in this term. The plain meaning of the term “perimeter” is a boundary (Macquarie Dictionary) and therefore “inner perimeter” would mean the inner boundary. In the context of a chain link this would refer to the boundary that defines the open space within the link. This term is clear.
Arcuate section and non-arcuate section
The plain meaning of the term “arcuate” is curved or arc-shaped and therefore the term “arcuate section” would refer to a section or portion of the inner perimeter that is curved or arc-shaped. This is also consistent with what a skilled addressee would understand when reference is had to the body of the specification.
It follows that the term “non-arcuate section” would define a section or portion of the inner perimeter that is not curved or arc-shaped and by implication this would necessarily mean a portion that is straight.
These terms in the claims are clear.
Less than substantially round
The opponent submitted that as noted by Mr Quill, the scope of this term is indeterminate as it could be construed as covering any shape other than a circle.
I think it is important to first construe what is “substantially round”. Applying the principles of construction that I noted earlier, the definition “substantially round” would be understood to include any variations or deviations from perfectly round that for all practical purposes would still be considered round enough for its intended purpose or function. In my view this term would be clear to the skilled addressee.
This then brings us to the term “less than substantially round”. This term did not feature in the PCT application as filed but was only introduced in to the specification by amendments during examination. Claim 1 defines that “the inner perimeter of each passing link including at least three arcuate sections, each arcuate section separated from the other by non-arcuate sections, such that the inner perimeter is less than substantially round”. When read in this context, it is clear that it is the combination of the arcuate sections and the non-arcuate sections that gives a shape for the inner perimeter that is “less than substantially round”. As I noted earlier, this claim has been drawn based on the embodiment of figure 11C which shows a shape for the inner perimeter that is almost square and which in my view would not be considered to be “substantially round”.
However I note that figure 11C is stated to be an enlarged view of one of the passing links 940 in chain 926 shown in figure 11A which was prepared for testing purposes in the tests that are reported in Example 1. In Example 1, it states that the prototypes built for this test had passing links that were produced by bumping the elongated links “to round the straight sides of the links so that the links became substantial rounded” (my underlining) and that “the prototype links were somewhat square”.
On the face of it there appears to be some inconsistency within the body of the specification, in that in one instance it appears to say that the “somewhat square” shape of the passing links produced as prototypes are considered to be “substantially round” and then in another instance it says the same “somewhat square” shape as shown in figure 11C is “less than substantially round”. However this inconsistency can be resolved when the specification is read as a whole. In my view what the specification is stating is that while the intent was to make the prototypes “substantially round”, the actual result was “somewhat square, which limited the freedom to rotate and reduced the benefit of rotating”. The reference to the freedom to rotate being limited is in my view suggesting that the inner perimeter did not perform for all practical purposes similar to a passing link with a substantially round perimeter, or in other words it had a shape that was not substantially round.
I am satisfied that the skilled addressee would understand the scope of the term “less than substantially round” when the claim is read in the context of the specification as a whole.
Are the passing links intermediate links?
The opponent submitted that claim 1 does not specify that the at least one passing link is an intermediate link and therefore the passing link can also be an end link.
While claim 1, unlike the other independent claims, does not explicitly state that the passing link is an intermediate link, I note that the claim requires that the passing link is “constructed and arranged to permit the passing link to turn with respect to both adjacent chain links” (my underlining). In my view the reference to the passing link being able to turn with respect to both adjacent chain links is an implicit definition of the passing link being an intermediate link. In my view it does not include an end link which has only one adjacent link.
FAIR BASIS
The opponent submitted that although the accepted specification conforms to the claims, the claims are still not fairly based because they are not limited to being formed by the “bumping” method which in their view was central to the invention and therefore an essential feature of the invention. They argued that the present case is similar to that of Olin Corporation v Super Cartridge Co Pty Ltd [1977] HCA 23 where the High Court found that the invention required the step of compressive deformation and that by not being so limited, the claims lacked fair basis.
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 (supra) 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” and
“It is wrong to seek to isolate in the body of the specification "essential integers" or "essential features" of an alleged invention and to ask whether they correspond with the essential integers of the claim in question”.
The problem that the invention seeks to address is increase the wear life of the chain links so as to reduce operating costs. The solution proposed by the invention is to form some of the links as passing links having a shape that permits the passing links to readily turn with respect to adjacent chain links thereby distributing the wear and stress about the inner perimeter of the passing links. In my view, this is the inventive idea that characterises the invention and which is present in all of the independent claims.
Although the opponent referred to the declaration of Mr McCauley, one of the inventors of the claimed invention, in support of the “bumping” method being an essential feature of the invention, the authorities that I have mentioned make it clear that such an approach of seeking to isolate essential features is not an appropriate test for fair basis. The present case can be distinguished from Olin (supra) where “The problem was to produce such an article, it being recognized generally that such an article was a necessary or desirable development. The invention supplied a process for the production of the article and at the relevant time it was the only process by which the article could be produced”. In the present case, it was not generally recognised that the ability for the links to rotate with respect to adjacent links was a necessary development.
The claimed invention does not travel beyond the matter described and is therefore fairly based.
NOVELTY
The general test for lack of novelty is the reverse infringement test. The classic formulation of this test was given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20], [1977] HCA 19; 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:
“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”.
D8: Fiskars Chain Catalog
The opponent submitted that the Fiskars Chain Catalogue disclosing flail chains was published in 1977. The applicant has not disputed this and I am therefore satisfied that it is a published document that is part of the prior art base for Novelty.
The applicant relied solely on the following figure from the catalogue:
Although there is no written disclosure to suggest that the inner perimeter of the links comprise at least three arcuate sections that are separated from each other by non-arcuate sections, the opponent submitted that it is clear from the figure that the links are not perfectly round and that they include at least three arcuate sections that are separated from each other by non-arcuate sections. They even provided the following reproduction of the figure in which they state they have highlighted the non-arcuate sections.
They further submitted that the links were most likely created by a similar method as in the opposed specification and that they would therefore inevitably have imperfections such as non-arcuate sections.
While I accept that the links may not look perfectly round and that some sections might appear to be non-arcuate, surely that cannot provide “clear and unmistakeable directions” to form the chain links with at least three arcuate sections that are separated from each other by non-arcuate sections. I further note that the applicant’s expert Mr Wallingford whose company sold the Fiskars chain, refers to the links of the Fiskars chain as “round” chain links (Wallingford 37-39). I am therefore not satisfied that this integer is disclosed.
As all of the independent claims include this integer, it follows that all of the claim are novel over D8.
D3: US 2795320 (Dillingham)
D3 relates to a debarking apparatus having flail chains. The opponent relied on figure 8 of D3 that is reproduced below.
It shows one form of a flail chain that has oval links 182 and one triangular end link. D3 states that the triangular shape of the end link is of substantial importance, in that when the base of the link strikes the log, “there is a tendency for the triangular link to move into the link that it is connected to, thus the triangular link in operation will be supported at different times by different corners so that the several bases are available for debarking thus increasing the wear factor of this link”.
The opponent submitted that the passing link in claim 1 would encompass an end link and as the triangular end link in D3 is able to turn with respect to its adjacent link and has three arcuate sections separated by non-arcuate sections, it anticipates claim 1.
I have earlier construed the passing link defined in claim 1 to inherently be an intermediate link. The intermediate links 182 in D3 are elongate links and do not have the ability to turn with respect to its adjacent links. While the triangular end link has three arcuate sections separated by non-arcuate sections it is clearly not an intermediate link and hence does not anticipate claim 1. Independent claims 2 and 3 include a similar definition of the passing link and in addition explicitly define the passing links as intermediate links. Therefore these claims are also novel.
All of the claims are novel over D3.
INVENTIVE STEP
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.”
Where the invention lies in a combination of features, the question is whether the combination, not each individual feature, is obvious when compared to the prior art base (Aktiebolaget Hässle v Alphapharm Pty Ltd [2002] HCA 59; 212 CLR 411 at 41; Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9 at [116]; [1980] HCA 9; (1980) 144 CLR 253 at 293).
Problem to be solved
I earlier mentioned that the specification states “a practical need to increase the projected debarking chain wear life, thereby reducing chain replacement cost per unit of processed wood products, along with associated costs of replacement materials and machine downtime”. In my view the problem to be addressed can be therefore stated as “how to increase the projected wear life of a debarking chain before it needs to be replaced”. The opponent has not provided any alternative statement of the problem.
In light of common general knowledge (CGK)
The opponent submitted that rotary kiln chains having round chain links were CGK and that Mr Wallingford has stated that “a person skilled in debarking chains will look at chains being used for other applications such as rotary kiln chains, to improve debarking chains.
Although Mr Wallingford states that the skilled person would look at chains being used for other applications such as rotary kiln chains, I am not convinced. Rotary kiln chains are used in a totally different environment and they are not flail-type chains mounted on a drum rotating at very high speeds. The forces acting on the debarking chain that repeatedly strikes a log would certainly be different to that acting on a rotary kiln chain.
Even if I accept that the skilled person would have regard to rotary kiln chains when trying to solve the problem of wear in the oblong links of debarking chains, the claimed invention requires that the inner periphery of the links includes at least three straight sections separating arcuate sections and the overall shape is not substantially round. While I accept that it is difficult to make perfectly round chain links due to manufacturing limitations, there is no evidence to suggest that such limitations will inevitably lead to a shape that has at least three straight sections and would fall outside what would be considered as substantially round.
I am not satisfied that the claimed invention lacks inventive step in light of CGK.
Ascertain, understood and regarded as relevant
Under s7(3) of the Patents Act, any document that is being relied on to establish lack of inventive step has to be one that the person skilled in the art would have ascertained, understood and regarded as relevant to the problem that is to be solved.
Both Mr Cox and Mr Quill have stated that patent specifications are a good source of information for following developments in the field of flail-type debarking and for finding out what competitors are doing. A contrary view has not been put forth by the applicant’s experts. I therefore accept that the skilled addressee in this field would have regard to patent documents.
D8: Fiskars Chain Catalog
The opponent’s submission on lack of inventive step based on the Fiskars chain is again based on the construction that the requirement for “less than substantially round” will be met by minor deviations from perfectly round that would be inevitable when manufacturing round chain links. They submitted that although the Fiskars chain was sold primarily for delimbing operations, the skilled person would understand that they could also be used in debarking operations by either modifying the drum to accept round chains or by including an oblong end link for mounting the Fiskars chain to an existing drum.
While I accept that it would have been obvious that the Fiskars chain could be used in debarking operations, given the total lack of any descriptive text accompanying this figure, I am not satisfied that the skilled addressee would have ascertained, understood and regarded D8 as relevant to the problem that is to be solved. Even if they would have, I have been presented with no evidence to establish that the skilled addressee would have as a matter of routine modified the substantially round links of the Fiskars chain to include at least three arcuate sections that are separated from each other by non-arcuate sections.
The claimed invention is inventive over the Fiskars chain.
D2: GB 886895 (Ruppert) and D8: US 1670723 (Hummel)
Ruppert discloses a debarking chain 2 having circular links 10. It states that the circular links are “movable relatively one to another. In this manner the chain links can rotate during the bark-removing operation and thus unequal wearing is prevented”.
Hummel discloses a debarking chain 50 having round links “in order to equalize and reduce wear”.
I am therefore satisfied that both these documents would have been ascertained, understood and regarded as relevant to the problem that is to be solved.
Again the opponent submitted that although the links in these two documents are stated to be round or circular, the PSA would understand that given the difficulty in manufacturing perfectly round links, the inner perimeter of the links of these documents could be less than substantially round.
For reasons discussed in relation to the Fiskars chain, this argument must fail. The claimed invention is inventive over Ruppert and Hummel.
D3: US 2795320 (Dillingham) + D2: GB 886895 (Ruppert) OR D8: US 1670723 (Hummel)
As noted earlier, Dillingham talks about increasing the wear factor of the end link. I am therefore satisfied that Dillingham would have been ascertained, understood and regarded as relevant to the problem that is to be solved.
The opponent further submitted that it would have been obvious to combine the teachings of either Ruppert or Hummel with that of Dillingham which disclose passing links that are less than substantially round and by doing so the PSA would be guided to create a chain link of claims 1-11.
Mr Quill states in paragraphs 138-141 of his declaration that it is “relatively more expensive, and may be cost prohibitive to manufacture a perfectly round chain link”, and therefore if the PSA were to manufacture a debarking chain as taught by Ruppert or Hummel, they “would look at other possible shapes to create a passing chain link” and that they “would be readily guided by Dillingham to produce a passing chain link having the claimed geometry of the inner perimeter”.
While Mr Quill’s evidence is uncontested, I do not find his evidence persuasive. While I accept that it is more expensive to manufacture a perfectly round chain link, the PSA would not understand the teachings of Ruppert or Hummel as requiring perfect roundness for the links. They would readily realise that any minor variations or deviations from perfectly round would still provide the same functionality of a perfectly round link in being able to rotate with respect to its adjacent links. I do not see the cost factor as providing motivation to move totally away from the round links taught in these documents to one in which the links are triangular as in Dilllingham.
Moreover I note that Mr Quill’s evidence in this matter has been made in hindsight with the benefit of the knowledge of the claimed invention. The authorities have warned that such statements should be treated with great caution.
In GlaxoSmithKline Consumer Healthcare Investments (Ireland) (No.2) Limited v Apotex Pty Ltd [2014] FCA 1398 Beach J held:
“An egregious form of impermissible hindsight has been the situation where a witness has been shown the patent specification in suit at a stage prior to that witness giving evidence that there was no inventive step involved.”
I am not satisfied that the PSA would have a matter of routine modified the teachings of Ruppert or Hummel to make the links triangular with three arcuate sections separated by three non-arcuate sections. The claimed invention is not obvious.
WO 2006/121574 (Peerless)
The opponent submitted that the claimed invention is not entitled to claim priority from the corresponding PCT application (Peerless) that was filed on 12 April 2006 as it is not fairly based on this application and that its priority date should be 4 May 2012. They further submitted that as a consequence, the claimed invention lacks an inventive step over this PCT application which was published on 16 November 2006.
Priority date consideration
While I have found that the claimed invention is fairly based on the accepted specification, the accepted specification is not the same as the PCT specification as filed, having been variously amended under s104 during examination. Therefore it is possible that the claims as accepted may not be fairly based on the PCT application as filed and as a consequence may have a priority date that is later than the filing date of the PCT application. The basis for this is in section 114 of the Patents Act and regulation 3.14 of the Patents Regulations as they existed at the relevant time.
114 Priority date of certain amended claims
(1) Where a claim of a complete specification claims matter that was in substance disclosed as a result of amending the specification, the priority date of the claim must be determined under the regulations.
3.14 Priority dates: certain amended claims
If subsection 114 (1) of the Act applies to a claim of a specification, the priority date of the claim is:
(a) in the case of an amendment to which subsection 89 (4) or (5) of the Act applies — the date on which the amendment is taken to have been made under that subsection; and
(b) in any other case — the date of filing of the statement of proposed amendments that resulted in the disclosure referred to in subsection 114 (1) of the Act.The thrust of the opponent’s submissions in this regard is that the Peerless application requires that the passing links must be round or substantially round and as a consequence there is no “real and reasonably clear” disclosure in Peerless for passing links that are “less than substantially round” as defined in the claimed invention.
On reading Peerless, it is evident that the term “less than substantially round” does not feature anywhere in the specification or its priority documents which are explicitly incorporated by reference into Peerless. I agree that the tenor of the specification is that passing links should be most preferably round or substantially round so that the links are free to turn with respect to adjacent links without being constrained by inner perimeter regions that are straight or not arcuate. There are numerous passages that the opponent referred to (53 of their written submissions) that strongly suggest that rounded passing links are most preferred and anything less would reduce the benefit of rotation of the passing links.
However I note that there are also references in Peerless that appear to suggest that the passing links need not be substantially round. Similar to the accepted specification, Peerless states “It will be appreciated that "passing" links will have an inner perimeter, surrounding an open space in the center of the link that will be arcuate in at least three different regions of this inner perimeter that may or may not be separated by substantially straight inner perimeter surfaces” and that the prototype links were “somewhat square”. However there is no embodiment described or illustrated in Peerless that shows links having a non-round shape with straight shank sections connected by arcuate sections. Figure 11C does not feature in Peerless and was only introduced into the accepted specification on 4 May 2012 by amendment. Even in relation to the prototype which is stated to be “somewhat square”, in paragraph [0050] where it describes how the prototypes were made it states:
“Each of the passing links were bumped in a Piranha Punch (Model: SEPP 35 Punch 35 ton hydraulic press from Piranha, Hutchinson, KS) to round the straight sides of the links so that the links became substantial rounded. The intent is to allow these links to rotate, thus distributing the impact point such that the typical high wear areas at each end of the second link and at the base (radius closest to the log) of the third link will be minimized.” (my underlining).
Although the applicant also relied on figure 11 of priority document US 60/671012, which they submit is the basis for figure 11C of the accepted specification, this figure is not clear and I cannot readily identify in the passing links 940b, at least three straight sections separating at least three arcuate sections similar to that seen in figure 11C so that the shape could be clearly considered “less than substantially round”. There is also no description of this figure in the body of this specification to clearly establish that the inner perimeter is square with straight sections separating arcuate sections. Figure 11 of priority application US 60/671012 is reproduced below.
Hence in my view while there are isolated references to the inner perimeter including at least three arcuate sections that may be separated by non-arcuate sections and that the prototype was somewhat square, that is more a reflection of the fact that it is difficult to form the links perfectly round due to limitations of the rather unusual bumping method of manufacture employed rather than a reasonably clear teaching to form the links with an inner perimeter that is not substantially round. The teaching of Peerless and its priority document is to form the links in such a manner that the inner perimeter is substantially round. There is no “real and reasonably clear” disclosure within Peerless or US 60/671012 for the passing link to have a shape that is “less than substantially round”.
The claims of the accepted specification are therefore not entitled to the priority date of 13 April 2005 or even 12 April 2006, the filing date of the Peerless PCT application. The feature of the inner perimeter being “less than substantially round” was first introduced into some of the claims through amendments filed on 22 January 2010 and this is therefore the earliest priority date they could have. While the opponent submitted that fair basis for these amended claims was only provided by subsequent amendments to the body of the specification filed on 12 May 2012, I do not find the need to clearly identify the correct priority dates for each of the independent claims. For the purposes of this decision it is sufficient that I have determined that the priority date of these claims is no earlier than 22 January 2010.
Inventive step considerations
Peerless was published on 16 November 2006 which is well before the earliest possible priority date of 22 January 2010. It is clearly directed to solving the same problem and would have therefore been ascertained, understood and regarded as relevant.
Although the opponent had pressed Peerless as a novelty destroying document in the SOGAP, at the hearing they accepted that it lacks clear and unmistakable directions that would lead to the claimed invention, but submitted that the claimed invention lacks an inventive step over Peerless.
The opponent argued that Peerless discloses a method for manufacturing passing links by a bumping method and that Mr McCauley’s evidence is that the actual use of the bumping method produced chains with the passing links having an inner perimeter that was less than substantially round with at least three arcuate sections separated by non-arcuate sections and “thus production of chain with the geometry claimed in the accepted claims was obvious, i.e. it actually occurred from Peerless chain even if not expressly disclosed in Peerless Chain”.
As discussed earlier, the teaching of Peerless is to use the bumping method to round the straight sides of the links so that the links became substantially rounded even though the prototype ended up being somewhat square. While some prototypes may have ended up being less than substantially round, it clearly says even in relation to the prototypes that the intent is to make them substantially rounded. The question therefore is whether the hypothetical skilled addressee faced with the problem of wear in the flail chain links would have as a matter of routine modified the teaching of Peerless to intentionally make the links in a manner that the inner perimeter has at least three arcuate sections that are separated by non-arcuate sections such that it is less than substantially round.
Mr McCauley is one of the inventors of the opposed application and in his declaration he provides a history of the development of the invention including the poor performance of their existing chains, the identification of the cause of wear to be the inability of the oblong links to rotate, the solution of making the links to have an inside width that would allow the links to rotate and the adoption of the “bumping” method of forming the chain links as the most cost effective of forming the links. The opponent primarily relies on paragraph [45] where in relation to the method of manufacturing the link, Mr McCauley notes:
“As we experimented, we found that the increased distribution of wear and impact upon the intermediate links by using enough mechanical force to reconfigure the intermediate link to give them greater freedom to rotate with respect to the two interconnected, adjacent links. Even if the inner perimeter of the modified intermediate link was less than substantially round, which it was, it was sufficient to better distribute wear and impact upon the intermediate links and therefore, the wear life of debarking chains having such modified intermediate links”.
I am not convinced that Mr McCauley is stating here that the use of the bumping method will inevitably result in a link with an inner periphery that is less than substantially round or that the intent was to always produce a link with an inner perimeter that was not substantially round. All he is stating is that even in those cases where the bumping did not result in a substantially round inner perimeter, the wear life was still improved compared to oblong links.
I accept that Peerless does state that even the somewhat square prototype provided improved wear life over oblong links, but I note that it also states that the somewhat square links limited the freedom to rotate and reduced the benefit of rotating. In my view this is teaching away from making the links less than substantially round. I further note that none of the opponent’s experts have provided evidence that would suggest that the claimed invention is obvious in light of the teachings of Peerless.
The High Court in Aktiebolaget Hassle v Alphapharm Pty Limited (2002) 56 IPR 129 noted that “It is important also to remember that in Australia, a "scintilla of inventiveness" will suffice: "no smallness or simplicity will prevent a patent being good"”. I am not satisfied that the claimed invention lacks even that scintilla of inventiveness over Peerless.
The claimed invention is not obvious over Peerless.
CONCLUSION
The opposition is unsuccessful. The claimed invention is clear, fairly based, novel and inventive.
COSTS
It is normal in proceedings such as these that costs follow the event and I can see no reason to vary that practice. The opposition has been entirely unsuccessful. I therefore award costs according to schedule 8 against the opponent, Function Chains Pty Ltd.
R Subbarayan
Delegate of the Commissioner of Patents
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