Gazmick Pty Ltd
[2014] APO 27
•19 May 2014
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Gazmick Pty Ltd [2014] APO 27
Patent:2001246246
Title:Rock bolt and method of manufacture and installation
Patentee: Gazmick Pty Ltd
Delegate: Ed Knock
Decision Date: 19 May 2014
Hearing Date: 28 March 2014, in Melbourne
Catchwords: PATENTS - third party request for post-grant re-examination – one patent document and six non-patent documents cited - four adverse re-examination reports – two statements of proposed amendments – leave to amend granted – claim construction – some claims found not novel – citations not ascertainable – limited evidence of common general knowledge - claims found to involve an inventive step – opportunity to amend.
Representation: Barry Hess of counsel, assisted by Dr Louise Duncan of counsel
and Richard Smoorenburg and Dr Carolyn Rolls of the firm Smoorenburg Patent & Trade Mark Attorneys, Melbourne
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent:2001246246
Title:Rock bolt and method of manufacture and installation
Patentee: Gazmick Pty Ltd
Date of Decision: 19 May 2014
DECISION
The amendments proposed on 22 November 2012 and 18 March 2013 to Patent No. 2001246246 are allowable, and leave is granted for those amendments to be made. All claims involve an inventive step. The inventions defined by claims 1 to 16, 20, 27, 28, 30 and 31 are not novel in light of the prior art cited in the re-examination request. Under section 106 I direct the patentee to file amendments overcoming this ground of objection within 60 days of the date of this decision otherwise I will revoke the patent.
REASONS FOR DECISION
Background
1. Patent application 2001246246 was filed as a PCT application (PCT/AU2001/000391) on 6 April 2001 and claims priority from Australian provisional patent applications PQ6797 and PR3746 filed on 10 April 2000 and 15 March 2001, respectively. Following entry to the national phase a request for examination was made on 9 February 2004, and examination was carried out. Even though the examination did not raise any significant invalidity issues, the applicant made extensive amendments for the express purpose of reducing the excess claim fees. The application was accepted on 26 October 2006 and a patent was subsequently granted on 22 February 2007.
2. On 1 June 2012, Greg Gurr of the patent attorney firm Spruson & Ferguson, Sydney, filed a request to the Commissioner on behalf of DYWIDAG-Systems International Pty Limited [DIS] to re-examine the patent. The request cited seven published documents (hereafter referred to as D1 etc. up to D7), in light of which it was said that all 32 claims of the patent lacked novelty and an inventive step. A re-examination report was issued on 3 October 2012, in which it was found that various ones of the 32 claims were lacking in novelty and/or inventive step in light of various ones of D1 to D6, with the overall outcome being that no claim was found to be both novel and to involve an inventive step. Thereafter, a further three (adverse) re-examination reports were issued, although by the fourth report D5 and D6 were no longer being cited as anticipatory. The patentee filed submissions in response to the first three reports. The responses to the first two reports were accompanied by proposed amendments under Section 104, and the response to the third report was accompanied by statutory declarations by Gary Robert Davison (one of the inventors), Peter Gilmour Fuller (also an inventor) and Michael Eckert. Another declaration, by Michael Laffin, was filed shortly thereafter.
3. On 14 November 2013 the patentee requested a hearing, and this was duly set down and held on 28 March 2014 in Melbourne. (Although nothing of importance attaches to this, I note that at the hearing counsel for the patentee produced a photocopy of a hearing request dated 25 October 2013, which he was under the apparent misapprehension had been filed.) Representing the patentee at the hearing was Barry Hess of counsel, assisted by Dr Louise Duncan of counsel, and Richard Smoorenburg and Dr Carolyn Rolls of the firm Smoorenburg Patent & Trade Mark Attorneys, Melbourne.
The specification
4. The invention relates to devices known as “rock bolts”. These are large, bolt-like contrivances which are inserted into the walls and roofs of mines and other excavations in order to act as reinforcing pins to aid in preventing pieces of the walls and roofs from breaking away. The normal method of insertion involves the drilling of holes slightly larger than needed to accommodate the rock bolts, inserting the rock bolt then fixing it in place. One way of fixing it in place is by use of a wedging mechanism (analogy to a DynaBoltTM was made in the evidence and at the hearing). Another way of fixing the rock bolt in place is by in-filling the hole with grout to fix the rock bolt in place. The grout used may be the commonly-known cement based grout, but may also be a resin grout. (The patentee took issue with the notion that resin in this situation is a “grout”, but my reading of the literature is that when used for in-filling purposes with rock bolts, it is usually referred to as such. Nothing of significance to the re-examination attaches to this, however, when the claims are properly construed.) It is also known in the prior art to use both fixing techniques in conjunction with each other.
5. The present invention uses the second technique (in-filing) by itself. It seeks to overcome several deficiencies of the prior art. The first is that cementitious grout takes a much longer time to cure relative to resin and, unlike resin, requires a “second pass” to inject into the hole occupied by the bolt. This “second pass” requirement, of which much was made in the lead up to, and also at, the hearing, simply means that because of equipment requirements the cementitious grout must be inserted into the hole in a distinct second stage carried out after the rock bolt has been installed in its hole. However, cementitious grout has an advantage over resin grout in that it is much cheaper. This advantage becomes particularly acute when flexibility is required in terms of the diameter of the hole drilled into rock into which the rock bolt is to be installed. This is because tolerances can be greater as there will be less of a cost detriment if cementitious grout is used.
6. The solution the inventors have arrived at to this problem is to create a rock bolt in which the load-bearing portion of the rock bolt (the “tendon”) is encased in a material which functions as a load transfer medium prior to insertion in the drill hole. The material must be capable of functioning as a load transfer medium so as to be able, in situ, to transfer load from the surrounding rock to the tendon. As is apparent from the specification, the inventors have in mind cementitious grout material for the load transfer medium. Two of the declarations provided by the patentee refer to the resultant rock bolt as being a “pre-grouted bolt”, which would appear apt.
7. Having pre-grouted the rock bolt to an appropriate size to be a reasonably snug fit in the particular size drill hole it is desired to use, it is then a relatively economical proposition to complete the in situ grouting of the rock bolt using resin as grout. I understand from the specification and the evidence that a standard technique for resin grouting involves inserting a cartridge or cartridges into the bore-hole ahead of the bolt and then inserting the bolt and rotating it to distribute the contents of the cartridges. However, as is stated in the specification, some prior art systems simply use pneumatic resin injection, although apparently there are considered to be difficulties in using these systems in relatively small diameter bore-holes.
8. The specification as presently proposed to be amended consists of 31 claims. Not counting omnibus claims, there are four independent claims: claims 1, 16, 17 and 21. Claim 1 reads as follows:
“A rock bolt shaped and adapted for one-pass insertion and fixed installation in a rock hole, the bolt including:
a load-bearing tendon; and
a load-transfer medium of at least a first material, the load-transfer medium surroundingthe tendon over at least a portion of the length of the tendon, the load transfer medium having been formed by casting or moulding prior to the insertion and fixed installation,
wherein, the bolt when inserted in the rock hole in association with resin can be rotated to
mix the resin; and
wherein, when the bolt is installed in the rock hole, the load-transfer medium acts to
transfer to the tendon a force applied from a source external to the bolt so that the load is borne substantially by the tendon.” [emphases added]
The under-linings in claim 1 shown above reflect the changes to the wording as a result of the two proposed amendments to the patent as referred to previously.
10. Whilst ostensibly a claim to an apparatus, as will be apparent, this claim includes amongst its integers several process-type elements.
11. Claim 16 is also a claim to a rock bolt. It is a little less wordy than claim 1, but involves only superficial variations over claim 1. Claim 17 is a claim to “a method of manufacturing a rock bolt in a rock hole in a single pass”, and it passes for a corresponding method claim to claims 1 and 16. Claim 21 is focussed upon the process of getting the resin grout into rock bolt bore-hole before and after the rock bolt has been inserted. It omits some of the explicit features that are in all of the other claims, such as that the transfer medium surrounds the tendon, and that the transfer medium is formed by casting or moulding (as per claims 1 and 16) or by casting or forming (as per claim 17). However I do not see there being anything of significance in the omitted features regarding the issues of concern here – novelty and inventive step - and I consider that therefore claim 21 may also be viewed as a corresponding method claim to device claims 1 and 16.
The re-examination reports
12. Because the fourth and last of the re-examination reports was issued after the commencement of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012, all the grounds set down in section 98 of the Patents Act were available for re-examination of the patent. The fourth and final re-examination report found that claims 1-6, 8-12, 14, 20, 27, 28, 30 and 31 lack novelty in light of the British Standard Code of Practice for Ground Anchorages, 1989 (D2); The application of Soil and Rock Anchors and Rock Bolts – on the way to science, by F.T. Herbst (D3); and DSI Report Anchor Systems, F.T. Herbst et al (D4). As well, the report also found that claims 1-6, 8-10, 14, 20, 27, 28, 30 and 31 lack novelty in light of German Patent Publication No. 17 59 561 3 C3 (D1). The report also found that claims 1 to 31 (that is, all claims) did not involve inventive step over documents D1 to D4 when considered with the common general knowledge in the art, particularly the use of resin as grouting for rock bolts.
Submissions
13. At the hearing, Mr Hess provided extensive written submissions, which formed the basis of his oral submissions at the hearing. I will provide details of the patentee’s submissions, where relevant, later in my decision. The third-party requestor also provided comments during the re-examination process.
Law
14. The relevant legislation covering re-examination is set out in Section 97 and reads as follows”
"Re-examination of complete specifications
.
.
.(2) Subject to this section and the regulations, where a patent has been granted, the Commissioner may, and must if asked to do so by the patentee or any other person, re-examine the complete specification."
16. Upon these conditions having been fulfilled, in then undertaking re-examination Section 98 requires:
“On re-examining a complete specification, the Commissioner must ascertain and report on:
(a) whether the specification does not comply with subsection 40(2) or (3); and
(b) whether, to the best of his or her knowledge, the invention, so far as claimed, does not satisfy the criteria mentioned in paragraph 18(1)(a), (b) or (c); and
(c) whether the invention is not a patentable invention under subsection 18(2).”
17. In this matter there are two discrete issues to be decided, which I am required to deal with in a particular sequence - see Commissioner of Patents v Emperor Sports Pty Ltd [2006] FCAFC 26. The first of these issues is whether the proposed amendments are allowable under Section 102 of the Patents Act 1990.
Section 104 amendments
18. The allowability of amendments is governed by section 102, which provides:
"(1) An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed.
Certain amendments of complete specification are not allowable after relevant time
(2) An amendment of a complete specification is not allowable after the relevant time if, as a result of the amendment,
(a) a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or
(b) the specification would not comply with subsection 40(2) or (3).
Meaning of relevant time
(2A) For the purposes of subsection (2), relevant time means:
(a) in relation to an amendment proposed to a complete specification relating to a standard patent - after the specification has been accepted;
.
.
.(3) This section does not apply to an amendment for the purpose of correcting a clerical error or an obvious mistake made in, or in relation to, a complete specification."
Novelty
19. In his written submissions, Mr Hess provided a detailed survey of the law on novelty. As Mr Hess noted at the hearing, the law on novelty and its principles are well-settled, and uncontentious.
20. 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;”
21. 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.
Inventive step
21. The effect of subsections 7(2) and 7(3) of the Patents Act 1990, in the case of applications filed before 1 April 2002 (as in the present matter), is that a claimed invention will lack an inventive step if it is obvious in the light of:
(a) common general knowledge; or
(b) common general knowledge considered together with information in a single document or through doing a single act, provided that the document or act could reasonably be expected to have been ascertained, understood and regarded as relevant to work in the relevant art in the patent area by the person skilled in the art.
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.
Approach Used to Assess Inventive Step
There are a number of approaches which the courts have used to assess inventive step. In Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at 286, Aickin J 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."
More recently, the High Court in Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59; 56 IPR 129 at 142-143 referred with approval to this approach and further held:
"That way of approaching the matter has an affinity with the reformulation of the ‘Cripps question’ by Graham J in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157. This court had been referred to Olin in the argument in Wellcome Foundation. Graham J had posed the 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 invention claimed] in the expectation that it might well produce [a useful result]?'
That approach should be accepted."
At the hearing, I canvassed the applicability of the “obvious to try” approach with Mr Hess, since he had not referred to it in his submissions. He responded by drawing my attention to a sequence of recent Federal Court decisions which, in his view, had the effect of casting doubt on the applicability of the “expectation that it might produce a useful result” test in mechanical-type inventions. Those decisions were Dynamite Games Pty Limited v Aruze Gaming Australia Pty Limited [2013] FCAFC 96 (4 March 2013); Ely Lilly and Company Limited v Apotex Pty Ltd [2013] FCA 214 (15 March 2013); and Wake Forest University Health Sciences v Smith & Nephew Pty Ltd (No 2) [2011] FCA 1002 (30 August 2011). What those decisions suggest is that, in the case of mechanical or electronic inventions, once an inventive feature is happened upon, the question of whether that feature will be able to be implemented will not be in doubt, and thus whether there would be any expectation of success is a non-issue in these cases, as there always would be an expectation of success. I accept the correctness of Mr Hess’s submissions in this regard.
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."
Decision
Section 104 amendments
30. The presently proposed amendments all comply with Section 102 of the Patents Act, in that the claims are in substance disclosed in the specification as filed, they are within the scope of the claims as accepted, and the amendments do not cause any non-compliance with section 40 of the Patents Act. I therefore find that the proposed amendments contained in the statement of proposed amendments filed on 22 November 2012 and 18 March 2013 comply with the requirements of section 102 of the Patents Act 1990, and I grant leave to amend the complete specification of patent 2001246246 in accordance with that statement of proposed amendments.
Claim construction
31. Before moving to consider the novelty and inventive step of the claims, it will be necessary to determine their scope, which in this case is a less than straightforward exercise. It will be convenient to focus on claim 1, which has been set out previously in this decision.
32. The rules of construction which apply to circumstances such as the present are long settled. The court decision which is often cited as providing a comprehensive survey of the rules of construction is Décor Corp v Dart Industries 13 IPR 385 at 400.
33. The first aspect of claim 1 requiring some analysis is the phrase “shaped and adapted for one-pass insertion and fixed installation”. Normally expressions such as “adapted for” are construed as having a slight limiting effect upon the scope of a claim in which they are present, in that they speak of a capability imposed by the feature that is defined in conjunction with that expression. However in my view the present case is an exception to that normal situation. I believe that two possibilities arise for the way “shaped and adapted for one-pass insertion and fixed installation” is construed in its current context. This expression can be read as simply heralding the features defined subsequently in the claim, in which case the scope of the claim will not be limited beyond what is imposed by those features. If, on the other hand, “shaped and adapted for one-pass insertion and fixed installation” is read (as I think the patentee contends it should be) as being something additional to the subsequently-defined features of the claim, then one would need to have recourse to the description of the specification to obtain an understanding of what effect that phrase has upon the scope of the claim. Upon doing this, it is apparent that “shaped and adapted for one-pass insertion and fixed installation” must relate to the sizing of the pre-grouting provided on the bolt to provide a snug fit in relationship to the rock hole. However, since the sizing of that rock hole is variable (being a matter of choice on the part of a rock bolt user), it follows that any feature of a claim which is defined with respect to such an unspecified rock hole must also be indefinite, and thus once again be not limiting upon the scope of the claim. It is also noteworthy that independent claim 16 does not have the words “shaped and adapted”, implying that these words are dispensable. I therefore conclude that the phrase “shaped and adapted for one-pass insertion and fixed installation” does not impose any actual limitation upon the scope of claim 1.
34. The other main feature of interest in claim 1 is that of “the bolt when inserted in the rock hole in association with resin can be rotated to mix the resin”. In this context, “when inserted” can be read as “when being inserted” or “once it has been inserted”. At first glance, this feature is also difficult to apprehend as imposing any significant limitation upon the scope of claim 1. This is because any solid object would appear to be rotatable if sufficient turning force is applied to it, and any rotating object would appear to be inherently capable of mixing resin. Furthermore, the qualifying words “in association with resin” do not appear effective to impose any substantial limitation upon the scope of the claim, since it is reasonable to assume that in normal circumstances “associated” resin would not impede the rotation of a rock bolt while it is being inserted, or once it has been inserted, into a rock hole, provided it had not yet cured. It is significant that the only feature of the rock bolt which is disclosed by the preferred embodiment, and which is directly involved with the rotation of the rock bolt, is a nut and a bearing plate, and apparently even this may be dispensed with, as indicated by this passage at page 22 line 3 of the specification:
“The present invention, although described in relation to nuts, it should be realised that other fastening means as would be known within the art can be used, such as a barrel and wedge anchor or tendon gripping devices attached to the spinning head of the installation equipment.” [emphasis added]
35. Finally, I will note that the final integer of the claim “wherein, when the bolt is installed in the rock hole, the load-transfer medium acts to transfer to the tendon a force applied from a source external to the bolt so that the load is borne substantially by the tendon” just states something which is understood to be inherent from what is previously defined in the claim. Mr Hess appeared in concurrence with this approach when it was put to him at the hearing.
36. Claim 1 may thus be rewritten in dot-point form as:
a rock bolt including:
· a load-bearing tendon;
· a load-transfer medium of at least a first material, the load-transfer medium surrounding the tendon over at least a portion of the length of the tendon;
· the load transfer medium having been formed by casting or moulding prior to insertion and fixed installation in a rock hole; and
· the rock bolt being capable of being rotated if it is being inserted into a rock hole, or if it has been inserted into a rock hole, in association with resin.
Novelty
37. The first prior published document said to deprive certain claims of their novelty is German Patent Publication No. 17 59 561 3 C3 (D1). D1 (in translation) is said to relate to “grouted anchors”, which I take to be the broad category of devices more commonly known as anchor bolts, of which rock bolts is a subset. The device of D1 differs in purpose from the device of the present invention, in that it is intended for anchoring a structure to bedrock and such-like, but would not appear to differ significantly in its manner of functioning, and the patentee has not raised any issue in relation to this.
38. D1 discloses an anchor bolt which has a load-bearing tendon which may be multi-stranded or single stranded, and that tendon is enclosed by a duct along the full length of the bolt. D1 specifically allows two possibilities for grouting this bolt into a bore-hole. The first of these is acknowledged prior art in the present application and does not have a bearing on this matter, and is to lower the bolt into a bore-hole before adding grout both inside the ducting between the duct and the tendon, as well outside the duct between the duct and the bore-hole. The second is, however, relevant, and requires that the grout between the duct and the tendon be added prior to lowering the bolt into the bore-hole, with the grout outside the duct being added after the bolt is lowered into the bore-hole. It is noteworthy that both alternatives seem to be described as being performed in a single operation, with this feature being present in the broadest claim, claim 1.
39. I think it is clear that the rock anchor of D1 has the first three integers of claim listed at [37], above. At the hearing, the patentee did, however, put up some resistance to the proposition that the fourth integer had been disclosed by D1. This is because D1, which seems to be focussed only upon cementitious grout, does not specifically mention the anchor bolt as being rotatable, and mentions the possibility (possibility only) that when pre-grouting approach is used it may be necessary for the pre-grouting to carry one or more tubes to enable the second stage of the grouting to be carried out once the anchor bolt is in place in its bore-hole.
40. The rock anchor of D1, which is very similar to the rock bolt of the patent in suit, is of generally cylindrical configuration. The bore-hole in which it is lowered is shown as having a circular cross-section. As a general proposition then, I cannot see why the rock anchor of D1 should not be seen as being just as rotatable as the present rock bolt, and to fall within the scope of the present claim 1. As to the contention that the tubes embedded in the pre-grout would prevent rotation of the rock anchor, putting aside the fact that it is expressly stated in D1 that in some circumstances these can be spared, I can see no reason why such tubes would need to extend outside the space occupied by the pre-grout, and thus not inhibit rotation of the rock anchor (except, of course, when temporary connection was made to the tube(s) to pass grout through them). In fact, PCT application WO 1998/011324 by Quantrix Pty Ltd, published on 19 March 1998, and cited in the fourth re-examination report, appears to show just such an arrangement.
41. It follows from the preceding that D1 discloses each and every integer of claim 1, properly construed, and that therefore claim 1 fails the reverse infringement test. I find that claim 1, as amended, is not novel in light of D1.
42. Of claims 2 to 15 appended to claim 1, the fourth re-examination report found that claims 2 to 6, 8 to 10 and 14 all only defined additional features over claim 1 which were disclosed by D1. The patentee did not appear to contest these findings. Those findings seem right to me, as far they go. However, claim 7 would also appear to be disclosed by D1, given that D1 appears to involve a casting operation as defined in claim 7. Claim 15 is also not novel, as the rock hole referred to is not a per se feature of the claim, and hence any feature defined in relation to it will be of indefinite, and thus non-limiting, scope. Accordingly, I find that claims 1 to 10, 14 and 15 are not novel in light of D1, and that claims 11 to 13 are novel in light of D1.
43. As noted previously, claim 16 is, for all intents and purposes, of corresponding scope to claim 1, and therefore it also lacks novelty in light of D1 for the same reasons as claim 1.
44. Claim 20 is a method claim which is dependent on certain of the device claims for its features. It reads:
“A method of manufacturing the rock bolt of any one of claims 1 to 16 for one-pass installation in a rock hole, the method of manufacture including the step of:
casting or moulding a transfer medium to surround a tendon over at least a portion of the length of the tendon to form the rock bolt prior to the one-pass installation in a rock hole.”
45. Claims 1 to 10 and 14 to 16 have already been found not novel. The method step defined by claim 20 simply repeats features already present in claim 1. Therefore it also is not novel.
46. Claims 27 and 28 are omnibus claims and are thus directed to the core features of the invention described by the specification in the specific form in which they are described. There would appear to be nothing of those specific forms which are not disclosed by D1.
47. Claims 30 and 31 are appended to each of claims 1 to 16, 27 and 28. The “de-bonding” feature referred to in these claims is explicitly disclosed in D1, and therefore these claims also lack novelty.
48. Claims 17 to 19, 21 to 26 and 29 are method claims which involve the use of resin to grout a rock bolt consisting of a load transfer medium portion and a load-bearing tendon portion, once it is in place in a bore-hole. At least implicitly, the load transfer medium portion is in place on the rock bolt before its insertion in the bore-hole. D1 does not disclose the use of resin, so claims 17 to 19, 21 to 26 and 29 are novel in light of D1.
49. In summary then, I find that claims 1 to 10, 14 to 16, 20, 27, 28, 30 and 31 are not novel in light of D1, while claims 11 to 13, 17 to 19, 21 to 26 and 29 are novel in light of D1.
50. Turning now to D2 (the British Standard Code of Practice for Ground Anchorages, 1989), this would also appear to anticipate claim 1. Similar considerations regarding the actual scope of present claim 1 against the interpretation of D2 also apply to D2. The most telling passage from D2 is probably this one, taken from paragraph 8.2.4.2.3.5:
“For use on bars, continuous sheaths of polypropylene giving substantial clearance around the tendon are convenient. In such cases sheaths are effective as coatings, e.g. to protect the inner barrier from damage during tendon handling and placement, providing that the internal annular space is filled during manufacture with appropriate resin, cementitious material or grease to exclude atmosphere or create the correct electrical environment. The method of filling should be such as to displace all fluids during injection and allow application of pressure to the filler to enable it to occupy all empty volume.” [emphasis added]
51. While it is apparent from the disclosure that the primary function of the cementitious material is corrosion protection of the tendon, the cementitious material will also inherently fulfil the load transfer function referred to in claim 1. Claim 1 therefore lacks novelty in light of D2.
52. Similar considerations as for D1 apply to the remainder of the claims, the only exceptions being that claims 11 to 13 also appear to lack novelty in light of D2. There are a number of references in D2 to the use of a nut in order to tension a rock anchor, and such a nut would appear to function as a drive head. This essentially forms the subject matter of claims 11 and 12. Also, I am inclined to agree with the third-party requestor that Fig. 24 of D2 shows a barrel-wedge anchor fitted to tendons, and thus claim 13 is not novel.
53. In summary, I find that claims 1 to 16, 20, 27, 28, 30 and 31 are not novel in light of D2, while claims 17 to 19, 21 to 26 and 29 are novel in light of D2.
54. D3 (The application of Soil and Rock Anchors and Rock Bolts – on the way to science, by F.T. Herbst) shows rock anchors which bear a marked resemblance to those shown in D1, D2 and D4. However, there does not appear to be any positive disclosure of when these devices acquired their grouting between their sheathing and their tendons, that is, there does not seem to be anything to say that this did not occur until the rock anchor was placed in its bore-hole. Applying the “clear and unmistakeable directions test” from General Tire v Firestone (1972) RPC 457 at pages 485, 486, I am not satisfied that D3 renders any of the claims in suit not novel.
55. D4 (DSI Report Anchor Systems, F.T. Herbst et al) on the other hand does appear to show at FIG. 41 a manufactured article which has not yet been put to its intended use as a rock anchor. This utilizes cement grout between its sheathing and its tendon. In like manner to D2, D4 would appear to cause claims 1 to 16, 20, 27, 28, 30 and 31 to be not novel, while claims 17 to 19, 21 to 26 and 29 are novel in light of D4.
Inventive Step
56. The first step in the determination of inventive step is to deduce who the PSA would be in the field of this invention. In this case the answer to that question is relatively straightforward – it would be an engineer trained in and working in any area where measures to mitigate soil or rock slippage are required. As to the problem addressed by the invention, Mr Hess’s perception of the problem was centred on the avoiding of two passes while installing the rock bolt using grout alone, and I accept the validity of that approach.
57. Because this application was filed in 2001, the question of whether or not it involves an inventive step must be assessed on the basis of the common general knowledge at the priority date alone, or else on the basis of common general knowledge and any single document which could reasonably be expected to have been ascertained, understood and regarded as relevant at the priority date of the claims.
58. The question of whether the seven documents cited by the third-party requestor, or at least the four documents cited in the final re-examination report, would have been ascertained, understood and regarded as relevant appears to have been taken as a given by the examiner. Mr Hess, for his part, contended that none of the documents would have been ascertained, understood and regarded as relevant.
59. Considering firstly the only patent document which has been cited in the final re-examination report, this being German Patent Publication No. 17 59 561 3 C3 (D1). Presumably this document has no family members, and exists only as a German-language German Patent document. As such, there is immediately a question over whether this document could have been ascertained. While it is not as remote a document as was the case in Madness Gaming Products, Inc v BCD Mecanique Ltee [2001] APO 70 (17 December 2001), it is still difficult to contemplate an Australian PSA spreading their net as far as German patent documents. Regarding the fact that the patent is in the German language, I note that in similar circumstances in Nippon Steel Corporation v BHP Steel (JLA) Pty Ltd [1999] APO 69 (28 October 1999), the hearing officer found that such a foreign language patent (Japanese in that case) would not be regarded as relevant. Another noteworthy fact in my view is that D1 relates to somewhat different subject matter to the present invention, a grout anchor compared with a rock bolt. The German patent was given IPC mark E02D 5/54 (“Piles with prefabricated supports or anchoring parts; Anchoring piles”), whereas the present patent is classified in E21D 21/00 and 20/00 (relating to anchoring bolts). Finally, I note the guidance given by the Full Federal Court in Commissioner of Patents v Emperor Sports Pty Ltd (2006) 149 FCR 386 at 393 that:
“Simply stated, we think it self-evident that it could not be reasonably expected that a Rugby League or Australian Rules coach, referee, umpire or administrator would conduct a search in the United States Patent Office. Such an expectation would be fanciful rather than reasonable.”
60. I accept that there may be a possibility that mining engineers and the such-like may regard German patents as a fruitful source of technical knowledge in this area, but I have no evidence that that is the case. In my view, the weight of the factors which I have set down above is against a finding that D1 would have been ascertained, understood and regarded as relevant.
61. Regarding D2 - British Standard Code of Practice for Ground Anchorages, 1989 – Derek Hird, who is CEO of the third-party requester and who filed the statutory declaration which put the non-patent literature citations D2 to D7 into file appears not to have been aware of D2, and is only able to express a “belief” that it “was reasonably well known to persons involved in the ground support industry, particularly those involved with the development of rock bolts, in Australia before April 2000.” Mr Hird’s evidence overall would seem to lead away from any conclusion of this document being ascertainable.
62. Regarding D3 - The application of Soil and Rock Anchors and Rock Bolts – on the way to science, by F.T. Herbst – Mr Hird is not able to provide any specific evidence on the manner in which this document would have been ascertainable by the PSA. Given that it is a paper presented at a symposium in Bangkok in 1982, and seemingly rather obscure, this appears to be an unlikely possibility.
63. Regarding D4 - DSI Report Anchor Systems, F.T. Herbst et al – the evidence establishes that this document, which is in the nature of a very large sales brochure, had a print run of 1500 in August 1997 and was distributed to customers at trade shows. This is indicative of the document being published, but does not establish that the Australian PSA, in seeking to solve the problem addressed by the invention, could have ascertained this document. Given the publication date of August 1997, it is unlikely to have been placed on the internet. It is notable also that Australia is missing from the 38 branch offices listed at the end of the document.
64. For the sake of completeness I will state that documents D5 to D7 suffer similar shortcomings to D2 to D4, and likewise were not capable of being ascertained, understood and regarded as relevant.
65. Since D1 to D7 are not available for consideration for inventive step purposes, the question of whether the presently claimed invention involves an inventive step must come down to the state of the common general knowledge in the art, and whether the present invention is obvious in light of that common general knowledge.
66. As to the common general knowledge, Mr Hess insisted that, as there was no evidence in this matter as to the common general knowledge (apart from the patentee’s, of course, and it is a reasonable assumption that that evidence would not be helpful to establishing the lack of an inventive step), I would be precluded from concluding that the invention does not involve an inventive step.
67. I do not think the situation is quite as absolute as Mr Hess has painted it. The position of the Commissioner in relation to evidence has been considered by a full bench of the Federal Court in Commissioner of Patents v Emperor Sports Pty Ltd [2006] FCAFC 26 where the Court stated:
“23 Senior counsel for the Commissioner submitted that the Commissioner can draw legitimate inferences from the material available to her. He said that his Honour erred in referring to a perceived need for the Commissioner to act only on "evidence". In support of this argument senior counsel said that the stages of re-examination and report (ss 97 and 98), like the stages of initial examination and report (s 45) and acceptance (s 49), involved essentially an inquisitorial procedure. This was in contrast to the stages of opposition before grant (ss 59 and 60) and revocation by the Court after grant (s 138), both of which involved an adversarial procedure.
24 It is not necessary to explore the suggested inquisitorial/adversarial dichotomy because we accept the basic proposition put. The Commissioner is an administrative decision-maker equipped with technical expertise. Subject to the rules of natural justice both common law and statutory (see e.g. s 101(2)), he or she is entitled to make use of that expertise, and draw inferences that may be rationally drawn from technical knowledge, including how skilled persons of various descriptions may act in their respective occupations: R v Milk Board; Ex parte Tomkins [1944] VicLawRp 38; [1944] VLR 187 at 197, Kalil v Bray [1977] 1 NSWLR 256 at 261, R v Industrial Appeals Court; ex parte Maher [1978] VicRp 12; [1978] VR 126 at 142, Rodriguez v Telstra Corporation Ltd [2002] FCA 30; (2002) 66 ALD 579 at 585, Tisdall v Health Insurance Commission [2002] FCA 97 at [103]. On an appeal by way of hearing de novo the judge would not be a person credited with technical expertise of his or her own. In such event the judge may be able to take into account conclusions of the Commissioner based on his or her expertise, subject of course to the rights of other parties to call rebutting or supporting evidence.”
And
“32 In considering who is the appropriate skilled person, and what such person might be reasonably expected to do when faced with the problem in hand, sometimes, indeed often, evidence may not be necessary. In many instances the answers will be obvious to the parties, the Commissioner and the Court. In high technology areas for example it will usually be assumed that the relevant skilled person will be familiar with the major professional or academic journals and could reasonably be expected to consult them. No evidence is required.”
68. I consider that the evidence available to me as to the common general knowledge comprises the various statutory declarations that have been filed in relation to this matter (including that of Mr Hird), and the various published patent documents and items of non-patent literature cited by the third-party requestor and the examiner in respect of any meaningful insights that they give as to the common general knowledge at the priority date of the present claims. I have also taken into account two unfiled additional statutory declarations by Gary Davison that were attached to the unfiled request for a hearing dated 25 October 2013 (see [3], above), and produced at the hearing.
69. The Hird declaration confines itself to establishing the extent to which documents D1 to D7 would have been disseminated to those in the mining industry in Australia. It does not enter into, in any direct way, the state of the common general knowledge. The other statutory declarations on file provide ample evidence, if such was necessary, that all the features of the rock bolt set down at [37], above, except for the pre-grouting step, are common general knowledge. That was also evident enough from the current specification.
70. I have already held that none of the prior art cited by the third-party requestor could reasonably be expected to have been ascertained, understood and regarded as relevant. This being the case, it would be illogical to suggest that the contents of these documents could be common general knowledge by virtue of their presence in these documents. Therefore these documents do not provide a basis for a finding that pre-grouting was common general knowledge at the priority date of the present claims.
71. The inventive step of the present invention can only reside, if at all, in the pre-grouting step (that is, the forming of a load transfer medium portion prior to insertion in a bore-hole) of the claimed invention. Pre-grouting as utilized in the present invention is a form of pre-casting. I think it is indisputable that pre-casting of itself must be considered to be common general knowledge. However pre-casting in the manner of the present invention would not appear to possess any practical advantages, or even be practical at all, given the uneven conformation of bore-holes which would appear to make the matching of the pre-cast grouting to any given bore-hole impractical. It is only when it is realised, as the present inventors have done, what opportunities are opened up for utilizing the more functional, but also more expensive, resin as grouting, that the advantages of doing so reveal themselves. I note that the patentee has indicated in its evidence that the invention has been a commercial success.
72. To my mind, the relative unexpectedness of the results to be achieved by pre-grouting give this invention the quality of non-obviousness. I therefore find that the amended claims involve an inventive step in light of all prior art raised in this re-examination.
Conclusion
73. The proposed amendments filed on 22 November 2012 and 18 March 2013 are allowable. I grant leave to make those amendments.
74. The inventions defined by claims 1 to 16, 20, 27, 28, 30 and 31 are not novel, while claims 17 to 19, 21 to 26, 27 and 29 are novel.
75. There is insufficient evidence to show that the invention claimed in any of the claims (that is, claims 1 to 31) does not involve an inventive step.
76. Based on these findings, clearly there is patentable subject matter disclosed in this specification. Consequently, as permitted by section 106, I direct the patentee to file amendments overcoming the ground of objection indicated above within 60 days of the date of this decision, otherwise I will revoke patent 2001246246.
E J Knock
Delegate of the Commissioner of Patents
0
6
0