Garford Pty Ltd v DYWIDAG-Systems International Pty Ltd - [2014] APO 37

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Garford Pty Ltd v DYWIDAG-Systems International Pty Ltd [2014] APO 37

Patent Application: 2009329824

Title:Apparatus and method for manufacturing a cable bolt

Patent Applicant:                   DYWIDAG-Systems International Pty Ltd
Opponent:  Garford Pty Ltd
Delegate:  Greg Powell
Decision Date:  5 June 2014
Hearing Date:  2 April 2014, in Sydney

Catchwords: PATENTS - section 59 – opposition to the grant of a patent – whether the invention is novel – invention novel – whether the claimed invention involves an inventive step – opponent has not discharged onus to show that invention was obvious in light of common general knowledge either alone or in combination with a document – evidence supplied by opponent infected by hindsight – whether the claims are clear – claims clear – whether the claims are fairly based – some claims found to lack fair basis – opposition successful on issue raised by Hearing Officer – no award of costs

Representation: Patent applicant: Mr Chris Burgess of Counsel, assisted by Greg Gurr of Spruson & Ferguson
Opponent:Mr Hamish Bevan of Counsel, assisted by Stuart Smith of Shelston IP

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2009329824

Title:Apparatus and method for manufacturing a cable bolt

Patent Applicant: DYWIDAG-Systems International Pty Ltd
Date of Decision: 5 June 2014
DECISION
Claims 18–23 lack fair basis. The opposition is otherwise unsuccessful.
The applicant is given 60 days to file amendments.
No costs awarded.
REASONS FOR DECISION
Background

Application 2009329824 in the name of DYWIDAG-Systems International Pty Ltd (“DSI”) was filed on 22 December 2009 as PCT/AU2009/001689. It was advertised accepted on 14 April 2011. A notice of opposition to the grant of a patent was filed by Garford Pty Ltd (“Garford”) on 14 July 2011.
Evidence in support was completed on 14 August 2012 following a number of extensions, with the final one being granted following a decision by the Commissioner’s delegate (see Garford Pty Ltd v DYWIDAG-Systems International Pty Limited [2012] APO 106). Evidence in answer was completed on 11 December 2012. Evidence in reply was served on 21 June 2013, once again after a number of extensions with, again, the last extension being granted following a decision by the Commissioner’s delegate (see Garford Pty Ltd v DYWIDAG-Systems International Pty Limited [2013] APO 43). The matter was heard on 2 April 2014. Following the hearing, further submissions were made on matters that I raised during the course of the hearing.
The Opposition
The grounds for opposition set out in the Statement of Grounds and Particulars (“SGP”) were that the claimed invention lacked novelty, lacked inventiveness, was secretly used and did not satisfy subsection 40(3) of the Act in that the claims were not clear. At the hearing, Garford indicated that its focus was on lack of inventiveness, lack of novelty for claims 18 and 19 only and lack of clarity.
Onus of Proof
The request for examination in relation to this patent application was filed on 20 January 2011. 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]; 50 IPR 305 at 311, 319; Commissioner of Patents v Sherman [2008] FCAFC 182 at [18], [22]; 79 IPR 426; Genetics Institute Inc v Kirin-Amgen Inc [1999] 92 FCR 106 at [17]).
The Specification
The present invention relates to an apparatus and method for manufacturing a cable bolt. The “Background of the Invention” from the specification states:
“Rock bolts are utilised to secure the roof or walls of an underground mine, tunnel or other ground excavation by inserting the rock bolt into a bore hole drilled in the face of the rock to be secured and securing the rock bolt within the hole. One known form of rock bolt is a cable bolt (sometimes called a strand bolt) that includes a plurality of wires helically wound into the form of a cable.
In one known cable bolt installation method, grout (or resin) is injected into the bore hole after insertion of the cable bolt so as to encapsulate at least part of the length of the cable, securing the cable bolt within the bore hole once the grout has set. A rock face plate is typically attached to the exposed end of the cable bolt and arranged to bear against the rock face to thereby apply a compressive load against the rock face, stabilizing the same. In order to increase the bond strength between the cable bolt and the grout encapsulating the cable bolt, it is known to form one or more bulbs in the cable bolt, thereby locally increasing the cross sectional area of the cable bolt, acting to resist pulling of the cable bolt through the grout.
In previously proposed techniques of forming bulbs along the length of a, cable bolt, a pair of longitudinally spaced clamps are arranged to releasably clamp a cable, with one of the clamps being longitudinally displaceable in relation to the fixed clamp by way of an hydraulic ram. In operation, the cable is clamped with the two clamps in a spaced apart relationship, with the displaceable clamp then being displaced toward the fixed clamp, thereby buckling the wires of the cable between the clamps, resulting in the formation of a bulb in the cable bolt.
Various arrangements have been proposed for advancing the cable to form successive bulbous portions spaced along the length of a cable. In the simplest form, a length of cable is manually advanced after forming each successive bulb. This manual process is, however, labour intensive and results in particularly slow production rates.
Arrangements have also been proposed that utilise the clamps that form the bulbs, either alone or in combination with additional clamps and hydraulic rams, to advance the cable after forming each successive bulbs. Again, however, such arrangements provide for relatively slow production rates. Also previously proposed is an arrangement that provides for a semi-continuous production of bulbed cable bolts, supplying coiled cable from a pay-out reel to a bulb forming device with the resulting cable being taken up by a rotatably driven take-up reel. To allow the formation of each successive bulb, both the pay-out reel and the take-up reel must be temporarily stopped whilst the clamps of the bulb forming device are activated to clamp the cable and form the bulb. Following formation of the bulb and release of the clamps, the pay-out reel and take-up reel must be brought back up to speed from a stationary state. Continually stopping and starting the pay-out and take-up reels limits production rates and is relatively inefficient, requiring the use of excess energy to stop and start the reels in each bulbing sequence.
There are also difficulties associated with the various methods of controlling advance of the cable to ensure successive bulbs are accurately spaced.”
The specification indicates that :
“It is the object of the present invention to substantially overcome or at least ameliorate at least one of the above disadvantages.”
The apparatus that DSI indicated was the invention is shown in the figure below:
The solution proposed by DSI is to continually rotate at least one of the supply reel (20) or the take-up reel (120) and, between one or both of these reels and the bulb-forming device (80), install an accumulator (40, 100) to “take up the slack” (my expression) while the cable is held stationary by the cable drive (60) as the bulb-forming device operates, but continues to unwind from the supply reel or be taken up by the take-up reel. Clearly, as more cable is accumulated and decumulated between the reels and the bulb-forming device, the rollers (41, 101) move down and up respectively.
The specification ends with 23 claims as follows:
1. An apparatus for manufacturing a cable bolt, said apparatus comprising:
a rotatably driven pay-out reel for paying out a cable coiled in use about said pay-out reel;
an upstream accumulator, located downstream of said pay-out reel, for accumulating cable advanced from said pay-out reel;
a bulb forming device, located downstream of said upstream accumulator, for forming a bulb in cable advanced from said upstream accumulator;
a cable drive, located downstream of said upstream accumulator, for advancing cable through said bulb forming device;
wherein said pay-out reel is configured to rotate at least substantially continuously whilst said cable drive is configured to advance the cable after formation of each bulb to a position for formation of a subsequent bulb in the cable, said cable drive stopping a central portion of the cable downstream of said upstream accumulator for formation of the subsequent bulb, said upstream accumulator accumulating or decumulating an upstream portion of the cable as required throughout operation of said apparatus to allow at least substantially continual rotation of said pay-out reel whilst the central portion of the cable is stationary.
2. The apparatus of claim 1, further comprising:
a downstream accumulator, located downstream of said bulb forming device and said cable drive, for accumulating cable advanced from said bulb forming device; and
a rotatably driven take-up reel for taking up cable advanced from said downstream accumulator;
wherein said take-up reel is configured to rotate at least substantially continuously, said downstream accumulator accumulating or decumulating a downstream portion of the cable as required throughout operation of said apparatus to allow at least substantially continuous rotation of said take-up reel whilst the central portion of the cable is stationary.
3. The apparatus of claim 1, wherein said cable drive is located upstream of said bulb forming device.
4. The apparatus of claim l, wherein said upstream accumulator is configured to engage an upstream portion of the cable and deflect the path of the upstream portion of the cable in a direction tending to maintain a constant tension in the upstream portion of the cable.
5. The apparatus of claim 4, wherein said upstream accumulator comprises a pulley mounted on a displaceable shaft.
6. The apparatus of claim 2, wherein said downstream accumulator is configured to engage a downstream portion of the cable and deflect the path of the upstream portion of the cable in a direction tending to maintain a constant tension in the upstream portion of the cable.
7. The apparatus of claim 6, wherein said downstream accumulator comprises a pulley mounted on a displaceable shaft.
8. The apparatus of claim l, wherein said bulb forming device comprises:
a first clamp adapted to releasably clamp the central portion of the cable with the central portion of the cable extending along a longitudinal axis;
a second clamp longitudinally spaced from said first clamp and adapted to releasably clamp the central portion of the cable with the central portion of the cable extending along said longitudinal axis; and
a clamp displacement drive for longitudinally displacing said first clamp, relative to said second clamp, along said longitudinal axis.
9. The apparatus of claim 2 further comprising a cutting device, located downstream of said bulb forming device for cutting cable advanced from said bulb forming device,
wherein said downstream accumulator and said take-up reel accumulator are displaceable from an operative position downstream of said bulb forming device.
10. An apparatus for manufacturing a cable bolt, said apparatus comprising:
a cable supply;
a bulb forming device, located downstream of said cable supply, for forming a bulb in cable advanced from said cable supply;
a cable drive, located downstream of said cable supply, for advancing cable through said bulb forming device;
a downstream accumulator, located downstream of said bulb forming device and said cable drive, for accumulating cable advanced from said bulb forming device; and
a rotatably driven take-up reel for taking up cable advanced from said downstream accumulator;
wherein said said [sic] take-up reel is configured to rotate at least substantially continuously whilst said cable drive is configured to advance the cable after formation of each bulb to a position for formation of a subsequent bulb in the cable, said cable drive stopping a central portion of the cable between said cable supply and said downstream accumulator for formation of the successive bulb, said downstream accumulator accumulating or decumulating a downstream portion of the cable as required throughout operation of said apparatus to allow at least substantially continuous rotation of said take-up reel whilst the central portion of the cable is stationary.
11. The apparatus of claim 1, wherein said cable drive is located upstream of said bulb forming device.
12. The apparatus of claim 2, wherein said downstream· accumulator is configured to engage a downstream portion of the cable and deflect the path of the upstream portion of the cable in a direction tending to maintain a constant tension in the upstream portion of the cable.
13. The apparatus of claim 6, wherein said downstream accumulator comprises a pulley mounted on a displaceable shaft.
14. The apparatus of claim 1, wherein said bulb forming device comprises:
a first clamp adapted to releasably clamp the central portion of the cable with the central portion of the cable extending along a longitudinal axis;
a second clamp longitudinally spaced from said first clamp and adapted to releasably clamp the central portion of the cable with the central portion of the cable extending along said longitudinal axis; and
clamp displacement drive for longitudinally displacing said first clamp, relative to said second clamp, along said longitudinal axis;
further comprising a cutting device, located downstream of said bulb forming device, for cutting cable advanced from said bulb forming machine.
15. A method for manufacturing a cable bolt, said method comprising:
rotatably driving a pay-out reel having a cable coiled thereon to pay-out said cable from said pay-out reel;
operating a cable drive, located downstream of said pay-out reel, to advance said cable through said cable drive and a bulb forming device;
operating said cable drive to intermittently stop a central portion of said cable whilst continuing to rotatably drive said pay-out reel;
whilst said central portion of said cable is stopped, forming a bulb in said central portion of said cable with said bulb forming device; and
accumulating an upstream portion of said cable, located upstream of said cable drive and said bulb forming device, whilst said central portion of said cable is stopped.
16. The method of claim 10, further comprising the steps of:
rotatably driving a take-up reel, located downstream of said bulb forming device, to take up cable advanced from said bulb forming device; and
accumulating a downstream portion of said cable, located downstream of said cable drive and said bulb forming device, whilst said portion of said cable is being advanced.
17. A method for manufacturing a cable bolt, said method comprising:
supplying cable from a cable supply;
operating a cable drive, located downstream of said cable supply, to advance said cable through said cable drive and a bulb forming device;
rotatably driving a take-up reel, located downstream of said bulb forming device, to take up cable advanced from said bulb forming device;
operating said cable drive to intermittently stop a central portion of said cable whilst continuing to rotatably drive said take-up reel;
whilst said central portion of said cable is stopped, forming a bulb in said central portion of said cable with said bulb forming device; and
accumulating a downstream portion of said cable, located downstream of said cable drive and said bulb forming device, whilst said portion of said cable is being advanced.
18. A method for manufacturing a cable bolt, said method comprising:
a) driving a cable along a longitudinally extending path through a bulb forming device having an upstream clamp and a downstream clamp longitudinally spaced from said upstream clamp;
b) at a position upstream of said bulb forming device, measuring displacement of said cable along said path whilst said cable is being driven;
c) stopping at least a portion of said cable extending through said bulb forming device upon a first predetermined displacement of said cable as measured at step b);
d) clamping said portion of said cable with said upstream clamp and said downstream clamp;
e). displacing said upstream clamp towards said downstream clamp, thereby longitudinally compressing said portion of said cable to form a bulb in said portion of said cable;
f). unclamping said portion of said cable;
g). further driving said cable along said path;
h). at said position upstream of said bulb forming device, measuring further displacement of said cable along said path whilst said cable is being further driven;
i) stopping at least a further portion of said cable extending through said bulb forming device upon a further predetermined displacement of said cable as measured at step h);
j) clamping said further portion of said cable with said upstream clamp and said downstream clamp;
k) displacing said upstream clamp towards said downstream clamp, thereby longitudinally compressing said further portion of said cable to form a further bulb in said further portion of said cable;
l) unclamping said further portion of said cable; and
m) repeating steps g) to 1).
19. The method of claim 18, wherein steps b) and h) are performed with a measuring device, output of said measuring device during steps e) and k) being disregarded when measuring displacement of said cable.
20. The method of claim 19, wherein said measuring device is a rotary shaft encoder.
21. The method of claim 20, wherein said shaft encoder is mounted on a wheel engaging said cable, said shaft encoder measuring rotation of said wheel.
22. The method of claim 20, wherein said shaft encoder is coupled to a drive shaft of said cable drive, said shaft encoder measuring rotation of said drive shaft.
23. The method of claim 18 wherein, immediately prior to unclamping said is portion of said cable in step f), and immediately prior to unclamping said further portion of said cable in step 1), a force applied to said upstream clamp to displace said upstream clamp toward said downstream clamp is removed, thereby allowing said upstream clamp to be displaced away from said downstream clamp during elastic recovery of said portion of said cable and during classic recovery of said further portion of said cable.
It is immediately apparent (and I noted so at the hearing) that there are a small number of dependency issues with these claims. Specifically:
(i)given their dependencies, claims 11–14 are identical in scope to claims 3, 6–8; and
(ii)method claim 16 is appended to apparatus claim 10.
While I will consider the claims as they are appended at present, DSI advised after the hearing that the claimed dependencies should have been (and would be amended after my decision to be) as follows:
Claim 11: The apparatus of claim 10;
Claim 12: The apparatus of claim 10;
Claim 13: The apparatus of claim 12;
Claim 14: The apparatus of claim 10; and
Claim 16: The method of claim 15.
It is also apparent that claim 6 refers to an upstream portion of the cable when referencing a downstream accumulator. While Garford originally raised a clarity issue in their SGP with respect to this claim, it was not pursued at the hearing since it was clear that “upstream portion” was a clerical error and clearly should have been referring to the “downstream portion” of the cable. I agree.

Similarly, Garford did not pursue their clarity point with respect to “said take-up reel accumulator” in claim 9 since it was readily apparent that “accumulator” was a mistaken addition. A similar position was taken with the phrase “classic recovery” in claim 23 which was clearly a clerical error that clearly should have said “elastic recovery”. Again, I agree.
Evidence
Evidence-in-support
The evidence in support consisted of the following statutory declarations and accompanying exhibits:
- A first declaration by Allan Clifford Wightley, with exhibits ACW-1 to ACW-18, dated 16 July 2012 (Wightley-1) setting out Mr Wightley’s relevant experience and his knowledge of cable bolts and accumulators. Mr Wightley also provides comments on a comparison between the present application and Australian patent AU 770594 (“the Garford Patent”), both documents having been supplied to him by Shelston IP. Mr Wightley notes that he had previously read both documents as part of giving evidence in Federal Court proceeding NSD767/2010 relating to the infringement by DSI, and validity, of the Garford Patent. Mr Wightley opines that the provision of accumulators to the apparatus described in the Garford Patent was the obvious solution once it had been decided to constantly rotate the supply and take-up reels. Mr Wightley also supplies his analysis of the claims of the present application.
- A declaration by Dr Andrei Lozzi, with exhibits AL-1 to AL-6, dated 14 August 2012 (Lozzi). Dr Lozzi, having been provided with Australian patent 640906 entitled “Improved Rock Anchor and Method of Manufacture” and the Garford Patent (by Shelston IP), gives evidence as to how he would modify the apparatus in the Garford patent if provided with the instruction to “improve the efficiency of that apparatus” (Lozzi at [6]). Dr Lozzi also compares the results of his work with the present application.
Evidence-in-answer
The evidence in answer consisted of the following statutory declarations and accompanying exhibits:
- A declaration by Dr Peter Gilmore Fuller, with exhibits PF-1 to PF-4, dated 30 November 2012 (Fuller), setting out Dr Fuller’s relevant experience in rock and cable bolts. Like Mr Wightley, Dr Fuller also indicates that he gave evidence in Federal Court proceeding NSD767/2010 relating to the infringement by DSI, and validity, of the Garford Patent. He states that he read the Garford Patent as part of giving that evidence. Dr Fuller indicates that he was given a passage entitled “Background”. That “Background” is identical to the “Background of the Invention” from the present application as set in paragraph [4] above. Dr Fuller then describes the steps he would take to overcome the problem relating to limited production rates mentioned in that passage.
- A declaration by Warwick Hutchins, with exhibuts WH-1 to WH-2, dated 3 December 2012 (Hutchins). As with Dr Fuller, Mr Hutchins indicates that he was given a passage entitled “Background” which, it is now known, is identical to the “Background of the Invention” from the present application as set in paragraph [4] above. Mr Hutchins then describes the steps he would take to overcome the problem relating to the continuous stopping and starting of the supply and take-up reels mentioned in that passage.
- A declaration by Gregory John Gurr, with exhibits GJG-1 to GJG-8, dated 11 December 2012 (Gurr), supplying various affidavits, statements and evidence supplied for Federal Court proceeding NSD767/2010 relating to the infringement by DSI, and validity, of the Garford Patent.
Evidence-in-reply
The evidence in reply consisted of the following statutory declarations and accompanying exhibits:
- A second declaration by Allan Clifford Wightley, dated 25 June 2013 (Wightley-2), criticising the solutions proposed by Fuller and Hutchins in their respective declarations.
- A declaration by Allan Neville Hedrick, with exhibit ANH-1, dated 14 June 2013 (Hedrick). Mr Hedrick notes that he is the named inventor for the Garford Patent. Mr Hedrick provides comments on the development of the device described in the Garford patent and provides some information on the dealings between Garford and DSI. Mr Hedrick also criticises the solutions proposed by Fuller and Hutchins in their respective declarations.
- A declaration by Campbell John Seccombe, with exhibit CJS-1, dated 5 July 2013 (Seccombe). Like Dr Lozzi, Mr Seccombe, having been provided with Australian patent 640906 entitled “Improved Rock Anchor and Method of Manufacture” and the Garford Patent (by Shelston IP), gives evidence as to how he would modify the apparatus in the Garford patent if provided with the instruction to “improve the efficiency of that apparatus” (Seccombe at [22]). Mr Seccombe also criticises the solutions proposed by Fuller and Hutchins in their respective declarations.
CONSTRUCTION
“accumulator”
At the hearing I asked the question whether the “accumulator” in the apparatus claims had to be a specific device. I noted that a box could be said to be an accumulator and wondered whether the accumulator(s) in the claims was, in fact, a device. I questioned whether the word could be interpreted more broadly to include “accumulating” a cable by allowing it to sag between the reel and the bulb-forming mechanism (i.e. gravity accumulation). Both parties provided submissions on this point after the hearing.
DSI submitted that the upstream and downstream accumulators referred to in the apparatus claims were physical components of the apparatus and that this is apparent from each of the claim text, structure and context. They noted that, in the claim text, the word “accumulator” was a noun and that it did not mean a state of affairs, i.e. “the state of being accumulated”. It was submitted by DSI that the claim language defines that the accumulator is a physical component that acts on the cable. The upstream accumulator was not a feature or state of the cable, such as slack or a catenary in the cable. They also submitted that the accumulators were, at all times, described and depicted throughout the specification and figures as physical apparatus components. DSI pointed to page 14, second para to page 16, para 1 and Figures 1, 2A and 2B of the opposed application.
Garford, in response, submitted that, if the term “accumulator” was meant to be a physical apparatus, then the claims should be amended to remove any doubt. They submitted that the broader interpretation of “accumulator” that I queried could arise by collectively considering the payout reel, the cable drive and the bulb-forming apparatus as an accumulator with accumulation occurring in the mode of a catenary between the reel and the cable drive.
DSI has the better argument. It is known that the specification is to read as a whole and it is permissible to refer to the description for clarification if a term is in need of interpretation.
In reading the specification as a whole, it is quite clear, as DSI submitted, that, in the context of the specification as a whole, an “accumulator” is a device.
“accumulating”
However, the same cannot be said for the word “accumulating” in method claims 15–17. This is not referring to something which acts on the cable, it is referring to a state of the cable. DSI understood this and conceded in their submissions that there was no requirement for the step of accumulating in these claims to be carried out by a physical component. Again, I agree with DSI.
Garford, for its part, noted the concession and went on to state that there was “very real doubt as to the fair basis for these method claims” and that the claims were “necessarily anticipated by the disclosure in the Garford patent”. I will consider these points later in my decision.
SECTION 40
Clarity
“substantially continuously”
Garford’s opposition on the ground of clarity was directed to the requirement in claim 1 that the pay-out reel rotate “at least substantially continuously”. Garford submitted that the use of “substantially continuously” rendered claim 1 unclear. Garford noted that pages 15 and 16 of the specification described that, in certain applications, the pay-out reel, and the take-up reel, would almost stop or momentarily stop if the rollers of the upstream and/or downstream accumulators came close to the ground. Garford asked the question of how the person skilled in the art would know how much stopping and starting is permitted by “substantially continuously”. Garford submitted that it was particularly important in this case, given that the solution proposed by DSI to the problems of the prior art was to continuously rotate the pay-out and take-up reels. Garford submitted that, while the specification indicated that there was momentary stopping, the question was how long was that moment before it could be said that the reel was not operating “substantially continuously”.
In response DSI firstly submitted that relative expressions such as this had been upheld in many cases (for example Austal Ships Pty Ltd v Stena Rederi Aktiebolag [2005] FCA 805 at [83] and Danisco A/S v Novozymes A/S (No 2) [2011] FCA 282 at [113]). DSI also submitted that the words were needed to cover the situation where there is a momentary stoppage of the reel due to any number of factors. DSI submitted that, if the words were not present, then it would be easy to avoid infringement by including incidental or unintentional stoppage in the potentially infringing device.
A claim does not lack clarity because it uses inexact expressions or is difficult to construe, as long as it provides a ‘workable standard’ suitable to the intended use (as per Henrikson v Tallon Ltd [1965] RPC 434; Minnesota Mining & Manufacturing Co & 3M Australia Pty Ltd v Beiersdorf (Aust) Ltd [1980] HCA 9; (1980) 144 CLR 253 at 274. As noted by the Full Federal Court in Austal Ships Pty Ltd v Stena Rederi Aktiebolag (supra):
“Lack of precise definition in claims is not fatal to their validity, so long as they provide a workable standard suitable to their intended use. The consideration is whether, on any reasonable view, the claim has meaning. In determining this, the expression in question must be understood in a practical, common sense manner. Absurd constructions should be avoided and mere technicalities should not defeat the grant of protection.”
To my mind, the words “substantially continuously” are clear. As DSI submitted, they provide a “workable standard” that allows the person skilled in the art to know what devices would and would not fall within the scope of the claim. “Substantially” denotes a level of “continuousness” that would include momentary stoppages but nothing substantial. While I accept that there is no precise definition of when a “moment” becomes “not a moment”, that level of precision is not required. To my mind, it is clear from the specification what is being defined here.
“at least”
Notwithstanding Garford’s submissions, I raised the question at the hearing on what “at least” meant in the phrase “at least substantially continuously”. I noted that “substantially continuously” included within its scope continuous rotation and momentary stoppages. I questioned why, in that circumstance, “at least” was required. I observed that claims often used “at least” to denote a list from which something was selected. I wondered what else was on the list in claim 1. DSI responded that “substantially continuously” would not include within its scope “continuously”. They submitted that “substantially continuously” meant “not quite continuously” and not “continuous” and the use of “at least” was required.
To my mind DSI is incorrect. I believe that a phrase such as “substantially X” includes both “not quite X” and “X” within its scope. While DSI stated that there might be some debate upon this point, the addition of “at least” adds nothing to the claim.
It follows from the discussion above with respect to “substantially continuously” and “at least” that I find the claims clear.
Fair Basis
Claims 18-23
At the hearing I queried whether claims 18–23 were fairly based on the description. I noted that, while the specific method of manufacturing a cable bolt that these claims define could be said to be described, these claims did not include any mention of accumulators. I stated that the specific method had only ever been described as occurring in a device with accumulators. I invited submissions on this point to be supplied after the hearing.
In response to my invitation, DSI submitted that a consistory clause relating to independent claim 18 was set out in the description on page 6. They pointed to the “Background of the Invention” as stating that there had been difficulties with the various methods of controlling the advance of the cable to ensure that successive bulbs were accurately spaced, and indicated that the invention of claims 18-23 was directed to solving this problem. As such, DSI maintained that this aspect of the invention should not be limited to embodiments that include accumulators, as it has broader application to apparatus without accumulators.
Garford simply submitted that there was no embodiment in which accumulators were absent, that, from a fair reading of the specification, accumulators were essential and that there must be real doubts whether embodiments absent accumulators would fulfil the promise of the invention. Graford also submitted that the presence of these claims, if they stayed, would give rise to a lack of unity objection.
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”
However, and importantly in this case, it was also stated in Lockwood (at [99]) that:
“the correct position is that a claim based on what has been cast in the form of a consistory clause is not fairly based if other parts of the matter in the specification show that the invention is narrower than that consistory clause. The inquiry is into what the body of the specification read as a whole discloses as the invention. An assertion by the inventor in a consistory clause of that of which the invention consists does not compel the conclusion by the court that the claims are fairly based nor is the assertion determinative of the identity of the invention. The consistory clause is to be considered by the court with the rest of the specification”
DSI’s submissions after the hearing have not persuaded me to a different point of view. It seems entirely clear to me that the method defined in claim 18 is never identified in the description as a method that is applicable to other devices. While DSI pointed to short passages in the specification which stated that the apparatus of the preferred embodiment was “an example”, I do not think that these detract from the other parts of the specification which show that the method of claim 18 is to be practiced by the device described. In particular I note that the cable drive, which is the element which carries out steps a), b), c), g), h) and i) of claim 18, is “further depicted in Figure 3” (see page 9, line 15) not as an isolated device but, clearly, a device which forms part of the overall apparatus shown in figures 1, 2A and 2B. In a similar way, the bulb forming device, which carries out steps d), e), f), j), k) and l) of claim 18, is “depicted in greater detail in Figures 4A through 4C” (page 10, lines 10–11) as opposed to the slightly less detailed depiction in figures 1, 2A and 2B showing the complete device. To my mind there can be no doubt that the invention is narrower than the consistory clause on page 6. Claim 18 travels beyond the matter described in the specification. Moreover, claims 19–23 do not cure this defect. They simply provide further features around the steps of claim 18 and do not add the features of accumulators, which are clearly part of the invention disclosed in the specification as a whole.
It follows that claims 18–23 lack fair basis.
Claims 15–17
With respect to Garford’s submission after the hearing that claims 15–17 were not fairly based, I do not think this has merit. I cannot see any inconsistency between claims 15–17 and the description. From the specification, deliberate accumulation is a necessary part of the invention, while the particular manner of achieving this is not. As method claims 15–17 include a step of deliberate accumulation, they do not travel beyond the matter described in the specification in the way that claims 18–23 do. They are fairly based.
NOVELTY
Claims 18 and 19
Notwithstanding the submission made by Garford after the hearing (which I will come to presently), Garford’s novelty submissions at the hearing were that claims 18 and 19 lacked novelty in light of the Garford Patent (i.e. AU 770594).
Under subsection 7(1) an invention is to be taken to be novel when compared with the prior art base unless, relevantly, it is not novel in the light of any one of the following kinds of information, each of which must be considered separately:
“(a) prior art information (other than that mentioned in paragraph (c)), made publicly available in a single document or through doing a single act;”
The test for determining whether the invention lacks novelty is the "reverse infringement test" as set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) CLR 228 at page 235 where Aickin J stated:
"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."
Infringement occurs when “each and every one of the essential features” of the claim has been disclosed by the alleged anticipation: see Rodi and Wienenberger AG v Henry Showell Ltd [1969] RPC 367 at 391.
Garford’s submissions were based on a statement made by Mr Wightley that:
“The method of claim 18 of the DSI Patent [2009329824] is described in the Garford Patent. As is apparent from the drawing I have reproduced in paragraph 44 above, the Garford apparatus includes a sensor, which is downstream from the bulb forming device. When the sensor encounters a bulb the movement of the cable is stopped, and a bulb is formed by the bulb forming device. This method is the subject of claim 12 of the Garford Patent.” (see Wightley-1 at page 19)
The drawing from [44] of Wightley-1 was a modified version of figure 2 of the Garford Patent in that it was reversed so that the supply reel was to the left of the picture and the take-up reel was to the right (as in the figures of the present application). It was depicted as follows:
However, while DSI based their argument (at least in their written submissions) upon Mr Wightley’s statement, Mr Wightley has nevertheless clearly stated that the “Sensor” in the figure (assuming it be something which measures displacement of the cable) is located “downstream” of the bulb-forming element. Claim 18 requires this displacement measurement to occur upstream of the bulb-forming element. Given this statement, the oral argument from Garford at the hearing was that the “Counter” of the figure depicted above, which is clearly located upstream of the bulb-forming element, measures displacement of the cable. Garford pointed to page 7, lines 11–14 of the Garford Patent which stated that:
“the movement of the multi strand cable 11 could be arrested for bulb formation by means of a timer mechanism or by means of trip means on a wheel to cause the apparatus to stop at each revolution of the wheel”.

Garford’s arguments must fail. The inference I believe I am being invited to draw is that the counter of figure 2 is the timer mechanism or trip means on a wheel and, therefore, the counter causes the apparatus to arrest the cable for bulb development. This is simply not disclosed. What is disclosed is a counter which, I am prepared to accept, measures displacement of the cable, but there is no disclosure of arresting the cable as a result of the displacement measured by the counter. As noted by DSI, the counter may simply measure the total amount of cable that has passed through the device; possibly to indicate when the supply reel is getting close to running out. There is no disclosure of “each and every one of the essential features” of the claim.
Claims 18 and 19 are novel.
Claims 15–17
Turning to the point that Garford raised in their submissions after the hearing that, given that the accumulating step in claim 15 was not limited to being performed by a device, claims 15–17 were anticipated by the Garford Patent, this can be dealt with quickly. Claims 15–17 include a step of deliberate accumulation. This is not disclosed in the Garford Patent. There is nothing in the Garford Patent which indicates that the cable is accumulated upstream of the bulb-forming element when it is stopped for the bulb-forming operation or accumulated downstream of the bulb-forming element when the cable is advanced to its next bulb-forming position. Whilst I note that Mr Hedrick in his declaration stated that, in his device, the cable accumulated under gravity during operation as it took time for the supply reel to stop turning, that is not what is disclosed by the Garford Patent. Moreover, this evidence of Mr Hedrick is applicable under the “prior use” arm of novelty and such prior use was not particularised by Garford in their SGP. As such, it stands outside this opposition. In any event, the evidence of Mr Hedrick on this point fails, in my opinion, to satisfy the high standard of proof required to establish prior use (see Aspirating IP Limited v Vision Systems Limited [2010] FCA 1061 at [199]-[200])
Claims 15–17 are novel.
INVENTIVE STEP
Garford submitted that the claimed invention was obvious on the basis of the common general knowledge alone or, alternatively, on the basis of the common general knowledge in combination with the Garford Patent.
Section 7 of the Act sets out that:
“(2)For the purposes of this Act, an invention is taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to the person skilled in the art in light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).
(3)The information for the purposes of subsection (2) is;
(a) any single piece of prior art information; or
(b) a combination of any 2 or more pieces of prior art information;
being information that the skilled person... could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded as relevant and, in the case of information mentioned in paragraph (b), combined as mentioned in that paragraph.”
So far as lack of inventive step in light of common general knowledge considered together with a single document is concerned, as a preliminary step it must be established whether the person skilled in the art (PSA) could be reasonably expected to have ascertained, understood and regarded the document as relevant.

While inventiveness requires more than novelty, even a "scintilla of inventiveness" is sufficient and a step, if otherwise inventive, does not lose its inventiveness because the idea, once conceived, is very simple to put into effect (Winner v Ammar Holdings Pty Ltd [1993] FCA 93; 25 IPR 273). The test is objective, so that it is irrelevant whether the invention was a matter of chance or the result of long experimentation and much effort (Winner v Ammar at 294).
Common General Knowledge
As a precursor to any inventive step consideration, the state of the common general knowledge in the art has to be established. The common general knowledge is the background knowledge attributable to the PSA. A widely accepted definition of common general knowledge is that provided by Aickin J in Minnesota Mining and Manufacturing Company and Another v Beiersdorf (Australia) Limited [1980] HCA 9; 144 CLR 253 at 292:
“The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge.”
The state of the common general knowledge is a question of fact which must, in general, be determined on the basis of evidence from persons whose background enables them to testify authoritatively as to the common general knowledge in the particular art. Indirect evidence such as widespread publication or admissions made in patent specifications may also serve to indicate something is common general knowledge.
The test for obviousness
The test for obviousness is whether it would have been a matter of routine to proceed to the claimed invention:
“The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.” (Aicken J in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12 at [45]; (1981) 148 CLR 262 at 286)
More recently, the High Court in Aktiebolaget Hässle v Alphapharm Pty Ltd [2002] HCA 59 at [51] - [53]; 212 CLR 411at [51] - [53] approved the approach taken in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157 at 187 in which Graham J had posed the reformulated Cripp’s question:
“Would the notional research group at the relevant date in all the circumstances directly be led as a matter of course to try [the claimed invention] in the expectation that it might well produce a useful [desired result]?”
The invention to be considered when assessing inventive is the invention as claimed. As noted by Jagot J in Apotex Pty Ltd v AstraZeneca AB (No 4) [2013] FCA 162:
“...in Danisco at [326] one principle which Bennett J identified as orthodox having regard to the reasons “as enunciated by the High Court in Aktiebolaget, Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) [2007] HCA 21; (2007) 235 CLR 173 [(Lockwood v Doric (No 2)] and Wellcome and by the Full Court in Lundbeck [H Lundbeck A/S v Alphapharm Pty Ltd (2009) 177 FCR 151 ; [2009] FCAFC 70] and Apotex”, and which was not disturbed in Novozymes A/S v Danisco A/S [2013] FCAFC 6, is that:
In assessing obviousness, it is necessary first to determine the nature of the claimed invention and the inventive step described in the Patent. This may involve ascertaining the starting point of the inventive step, sometimes described in terms of an existing problem for which the inventor found a solution. The obviousness of the invention as claimed is then assessed by reference to common general knowledge in Australia at the priority date.”
An important consideration is the impermissible use of hindsight. The High Court in Alphapharm (supra) also warned against the misuse of hindsight, noting that the danger of such misuse will be “particularly acute where what is claimed is a new and inventive combination for the interaction of integers, some or all of which are known”. In that regard, the court referred with approval to Lord Diplock’s comments in Technograph Printed Circuits Ltd v Mills & Rockley (Electronics) Ltd [1972] RPC 346 (at 362)]:
“Once an invention has been made it is generally possible to postulate a combination of steps by which the inventor might have arrived at the invention that he claims in his specification if he started from something that was already known. But it is only because the invention has been made and has proved successful that it is possible to postulate from what starting point and by what particular combination of steps the inventor could have arrived at his invention. It may be that taken in isolation none of the steps which it is now possible to postulate, if taken in isolation, appears to call for any inventive ingenuity. It is improbable that this reconstruction a posteriori represents the mental process by which the inventor in fact arrived at his invention, but, even if it were, inventive ingenuity lay in perceiving that the final result which it was the object of the inventor to achieve was attainable from the particular starting point and in his selection of the particular combination of steps which would lead to that result.”
The problem and the person skilled in the art
Garford and DSI disagreed over what the problem was and who was the person skilled in the art. Garford maintained that the problem that the invention seeks to solve is the development of an apparatus for producing a continuous length of bulbed cable bolts which is more efficient, in the sense of one that uses less energy than the semi-continuous production of the apparatus described in the background. On the other hand, DSI submitted that there were numerous problems identified in the “Background of the Invention” as given at the start of this decision, and that the problem to be overcome was at least one of the disadvantages associated with the various previously proposed arrangements.
When it came to the person skilled in the art, Garford submitted that the person skilled in the art was a person with an engineering background and experience in the design of industrial machinery. Graford’s position was that, as the invention was about improving efficiency of an already-existing machine, a machine designer was required. DSI sought a narrower scope for the person skilled in the art and submitted that, since the technical field of the invention was identified in the specification to be “strata control”, and, more particularly, the manufacture of rock bolt products that are used for that purpose, the person skilled in that art was an engineer working in the field of cable bolts. DSI noted that the Federal Court proceedings between the two parties (NSD767/2010) had been conducted on the basis of this type of person skilled in the art.
Ultimately, I do not have to decide one way or the other since the outcome is the same. However, I will comment that I believe DSI has the better argument with respect to the problem, but Garford has a better argument with respect to the person skilled in the art.
In Light of Common General Knowledge
The principal problem with Garford’s opposition is that its evidence does not establish “enough” common general knowledge (if I may put it that way) to discharge its onus.
As DSI noted, the only submission Garford makes about the state of the common general knowledge is that “the evidence filed in this opposition establishes that accumulators and their use in controlling tension in processing of continuous strips or lengths of material was CGK as at 24 December 2008”. Accepting that without question, that still leaves open the question whether every other element of the apparatus defined in the claims of the present application is also part of the common general knowledge. Garford sought to overcome this deficiency by pointing to the “Background of the Invention” which refers to a previously proposed arrangement for semi-continuous production of bulbed cable bolts. They noted that the device described there was the apparatus described in the Garford Patent.
I believe that the inference I was being invited to draw was that this “Background” was a statement of common general knowledge since the device of the Garford Patent was known. I do not think that follows. There is no evidence which would indicate to me that the device of the Garford Patent was common general knowledge. This is notwithstanding the fact that the Federal Court in its decision on proceeding NSD767/2010 between DSI and Garford (see DSI Australia (Holdings) Pty Ltd v Garford Pty Ltd [2013] FCA 132 ) found that the invention defined in the Garford Patent lacked inventive step in light of the common general knowledge. If an invention lacks an inventive step in light of the common general knowledge, it does not follow that the invention is common general knowledge.
Moreover, even accepting that every individual element of the claimed invention was well-known in the art, it does not follow that the combination of those features is obvious. Where an invention relates to a specific combination of integers or features (as is the case here), when deciding the inventiveness of that combination, some guidance is provided in Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd (1979-80) 144 CLR 253 at page 293:
“In the case of a combination patent the invention will lie in the selection of integers, a process which will necessarily involve rejection of other possible integers. The prior existence of publications revealing those integers, as separate items, and other possible integers does not of itself make an alleged invention obvious. It is the selection of the integers out of, perhaps many possibilities, which must be shown to be obvious.”
That is, where each of the individual integers of the combination is common general knowledge, evidence is needed to establish that the person skilled in the art would have selected those integers and combined them in the way claimed.
It is possible to obtain a valid patent for combinations of known integers – patents for new electrical circuits immediately spring to mind – as long as the evidence does not show that the person skilled in the art would have made the combination as a “matter of routine” (Wellcome (supra)). That evidence is missing here.
Garford compounded its difficulty by giving its experts a copy of the Garford Patent, informing them it was inefficient and asking them to redesign the device of the Garford Patent to overcome this problem. Garford’s evidence simply does not establish that this is what would have been done. In my opinion, the line of reasoning exhibited by Garford’s experts (i.e. starting with the “Background of the Invention”, equating that to the Garford Patent and then continuing onwards as set out in Garford’s evidence), can only be done with hindsight. That hindsight has infected Garford’s evidence to such a degree that, even though the evidence from DSI’s experts is no better, it cannot be given much weight (if any) as to what the person skilled in the art would be “directly be led as a matter of course to try … in the expectation that it might well produce a useful [result]?” (as per Olin Mathieson (supra)). Garford has not discharged its onus.
I cannot find that the claimed invention lacks an inventive step in light of common general knowledge alone.
In Light of Prior Art Information + Garford Patent
Garford submitted that the claimed invention was obvious when the common general knowledge was considered together with the Garford Patent. Garford maintained that the Garford Patent could reasonably have been expected to have been ascertained, understood and regarded as relevant.
Evidentiary problems similar to those mentioned above arise with Garford’s attack under this ground. The declarants for Garford who commented on the Garford Patent (Mr Wightley, Dr Lozzi, Mr Seccombe) were given the Garford Patent by Shelston IP. They did not find it on their own.
Mr Wightley’s evidence
Mr Wightley states that he was aware of the Garford Patent given his involvement in Federal Court proceedings NSD767/2010. Notwithstanding this, Mr Wightley makes no statement in his evidence that persons skilled in the machine design art consider patent literature or that they would have located the Garford Patent. Mr Wightley was also given a copy of the present application and instructed to “comment on [his] understanding of the apparatus and methods described in the patent”. Mr Wightley does just this, but he takes the discussion in the “Background of the Invention” to be “a reference to the apparatus and method described in the Garford patent”. Apart from the use of impermissible hindsight, there is no justification for this. Tellingly, he continues:
“That is, the DSI Patent purports to provide an apparatus and method that addresses what the DSI Patent identifies as a problem in the Garford Patent” (my emphasis)
That is, Mr Wightley has:
(i)taken two patent documents (the present application and the Garford Patent);
(ii)equated the Garford Patent as being the “Background” of the present application;
(iii)used the present application to identify a problem in the Garford Patent; and
(iv)then used the Garford Patent (which has the problem) to solve the problem.
Such a line of approach is heavily tainted with hindsight. As for the previous discussion with respect to inventive step in light of common general knowledge, even though the evidence from DSI’s experts is no better, I cannot see why Mr Wightley’s evidence carries weight. It is infected by hindsight.
Dr Lozzi’s and Mr Seccombe’s evidence
The evidence of Dr Lozzi and Mr Seccombe does not avoid the same hindsight problem. Both Dr Lozzi and Mr Seccombe were given the Garford Patent by Shelston IP. Dr Lozzi and Mr Seccombe, despite having been given the patents, make no statement in their evidence of their familiarity with the patent system or its use by machine designers as a source of information. To compound the problem with their evidence, Dr Lozzi and Mr Seccombe were then asked, having been given the Garford Patent, to improve the efficiency of the described device. That is, they were not only led to the Garford Patent, they were then effectively informed that it had a problem and the problem to be solved was identified. The occurrence of hindsight in such circumstances is inevitable. I do not ascribe weight to the evidence of Dr Lozzi and Mr Seccombe.
Conclusion
I cannot find that the claimed invention lacks an inventive step in light of common general knowledge in combination with the Garford Patent on the evidence before me.
Furthermore, even if it is accepted that patent documents would have been ascertained by machine designers (and, on the evidence before me, I am sceptical, to say the least), there is no evidence that the Garford Patent would have been regarded as relevant when it apparently has the problem rather than solves the problem.
Moreover, I believe that my conclusion on obviousness would be the same even if weightier evidence had been provided. In this regard I note that Mr Hedrick, in his evidence for Garford, stated that while designing the device to produce bulbed cable bolts that DSI says is what is referred to in the “Background of the Invention”, he considered the use of accumulators but rejected them as unnecessary. That is, even the inventor of the device that Garford submits it would be obvious to add accumulators to did not think of adding accumulators. It is difficult to square this situation with the requirement that the person skilled in the art “directly be led as a matter of course to try” the addition of accumulators. While it has to be said that the experts for Garford proceeded directly from the Garford Patent to the solution claimed in the present application, their approach, as I have noted, was so affected by hindsight as to be unhelpful in determining what the person skilled in the art would have done.
It was submitted by Garford at the hearing that it would be an “extraordinary proposition” that the advance of “decoupling” the reels (as DSI put it) from the bulb-forming apparatus via the use of accumulators (which are well-known and well-understood devices), could be the subject of a monopoly. However, on the basis of the evidence provided by Garford in this opposition, I cannot conclude otherwise.
CONCLUSION

The opposition is successful as I have found that the claims 18-23 lack fair basis. The remaining grounds have not been established on the evidence Garford provided.
It is clear that the problems I have identified can be overcome by simple amendments. I also note the appendence problems that I identified could also be overcome by simple amendment which DSI also identified after the hearing. I allow DSI 60 days from the date of this decision to file amendments if they wish to do so.
COSTS
It is usual for costs to follow the event. In the present case, while the opposition has been successful, it has been on a fairly minor point of fair basis and, what is more, on a point that I raised at the hearing rather than being raised by Garford in their SGP. Garford was not successful on any point it raised. In these circumstances, I think it appropriate that I make no award of costs.
Greg Powell
Delegate of the Commissioner of Patents