Go 4 Mining Pty Ltd v CMTE Development Limited
[2007] APO 37
•8 November 2007
ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No.780939 in the name of Go 4 Mining Pty Ltd
Title: Improvements in Drag Line Bucket Controls
Action: Opposition under Section 59 of the Patents Act by CMTE Development Limited
Decision: Issued 8 November 2007
Abstract
The invention relates to improvements in a drag line bucket control system that includes two hoist ropes and a drag rope.
The application was opposed on the grounds of clarity, full description and fair basis in relation to a claimed feature and lack of novelty, inventive step and manner of manufacture on the basis that the only feature capable of distinguishing the claimed invention from prior art was the claimed feature.
The claims were found to comply with the requirements of clarity, full description and fair basis and also found to be novel, not lacking an inventive step and for a manner of manufacture.
The opposition was therefore unsuccessful.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re: Patent Application No. 35201/2001 (780939) by Go 4 Mining Pty Ltd and opposition under section 59 by CMTE Development Limited
BACKGROUND
Patent Application 35201/01 was filed on 12 April 2001 by Ground Breaking Innovations Pty Ltd claiming earlier priority dates of 13 April 2000 based on PQ6887 and 19 May 2000 based on PQ7644. The application was examined and advertised accepted on 28 April 2005. The applicant subsequently changed its name to Go 4 Mining Pty Ltd.
CMTE Development Limited (CMTE) filed a notice of opposition on 14 July 2005, a Statement of Grounds and Particulars on 14 October 2005 and completed evidence in support on 9 October 2006. The applicant indicated that they did not wish to file evidence in answer and the matter was set for a hearing.
The hearing was held by telephone in Canberra on 25 July 2007. The opponent was represented by John Forster and Linda King, Patent Attorneys from Shelston IP. Detailed written submissions were provided by the opponent. The applicant, represented by Fisher Adams Kelly, declined the hearing invitation and did not provide any written submissions for the hearing.
STATEMENT OF GROUNDS AND PARTICULARS
The application was opposed on the grounds of clarity, full description, fair basis, novelty, inventive step and manner of manufacture.
The feature in independent claims 1 and 21 “said outer boom sheave being supported by a boom sheave support arm to one side of a longitudinal axis of said boom” was identified as being relevant to clarity, full description and fair basis.
In the particulars, CMTE identified twenty eight documents in support of novelty, inventive step and manner of manufacture.
It was also indicated that evidence would be adduced that some claimed features were matters of common general knowledge in Australia at the relevant date.
EVIDENCE / HEARING SUBMISSIONS
Evidence in support of the opposition by CMTE consisted of:
· Statutory declaration dated 6 October 2006 by John Douglas Forster [with exhibits JDF1 to JDF5 of which JDF1, JDF4, JDF5 are documents said to be relevant to novelty and JDF2 and JDF3 are priority documents filed to establish an earlier priority date for claimed matter disclosed in JDF1].
The hearing submissions were limited to novelty based on the five documents in evidence. The argument of lack of clarity, full description and fair basis was maintained.
SPECIFICATION
The specification states that the invention relates to a bucket control system for dragline excavators.
The specification includes 27 claims including two independent claims 1 and 21. Claims 26 and 27 are omnibus claims. It is convenient to set out the independent claims as follows (with the characterizing features marked X and Y):
Claim 1
1. A dragline excavator bucket control system, said system comprising:
a pair of hoist ropes and a drag rope, respective free ends of said hoist ropes being coupled adjacent opposite ends of a dragline bucket and said drag rope being coupled adjacent a front end of said dragline bucket, said hoist ropes being supported on an excavator boom on spaced respective inner and outer boom sheaves; and,
a boom sheave support arm mounted adjacent a free end of said excavator boom to support said outer boom sheave to one side of a longitudinal axis of said boom (“X”)
whereby, in use,
said pair of hoist ropes extending between respective sheaves and respective couplings to said bucket remain substantially parallel to retain said bucket in an optimal transport attitude when moving between a retracted and an extended position under the influence of said drag rope. (“Y”)
Claim 21
21.A method of operating a dragline excavator wherein a pair of hoist ropes are coupled adjacent opposite ends of a dragline bucket, said hoist ropes being supported on an excavator boom on spaced respective inner and outer boom sheaves,
said outer boom sheave being supported by a boom sheave support arm to one side of a longitudinal axis of said excavator boom (X)
whereby, in use,
said pair of hoist ropes extending between respective sheaves and respective couplings to said bucket remain substantially parallel to retain said bucket in an optimal transport attitude when moving between a retracted and an extended position under the influence of a drag rope coupled to said bucket. (Y)
The specification at pages 2-6 and particularly at pages 5-6 discusses prior art mechanisms for and problems associated with controlling the position (along X, Y coordinates) and angular orientation of the bucket. It is clear from the specification as a whole that the broad concept of the invention resides in maintaining the hoist ropes substantially parallel to each other as the bucket moves between retracted and extended positions so that the angular orientation of the bucket is substantially unaltered over the entire reach of the bucket (Y).
DECISION
Onus of proof
I note that it is well established in proceedings such as these that the onus of proof lies with the opponent who must establish that it is clear that a valid patent cannot be granted (F Hoffman-La Roche AG v New England Biolabs Inc 50 IPR 305 at 67).
I will now consider each ground raised by the opponent in turn and refer to the evidence and submissions as required.
Section 40 matters
Clarity (“one side of”)
The opponent has submitted that the terms “to support said outer boom sheave to one side of a longitudinal axis of said (excavator) boom” (X) defined in the independent claims are unclear. I note that there have been no submissions from the applicant, nor any specific comments by the opponent on the issue of clarity.
In my view, the feature in dispute is clearly capable of skilled interpretation as follows: The words “to support said outer boom sheave to one side of a longitudinal axis of said boom” simply mean that the axis does not pass through the sheave. When this is considered in light of the other known constraints which are (a) the boom axis extends at an angle to the ground and (b) the sheave axis is horizontally disposed to support the hoist ropes in a vertical plane, only one inference is possible: the sheave must be located either above or below the boom axis. However, having the sheave located above the boom axis would lead to a steep carry angle leading to an unlikely construction. On balance, I conclude that the requirement in the claim “…one side of…’ is simply that the outer sheave is located below the longitudinal axis. I note that this is consistent with Figure 4 of the specification drawings reproduced below. The figure shows the outer sheave (21) being located below the boom axis (3) consistent with my interpretation.
I note that in evidence for the opponent Mr. Forster has stated that the allegedly unclear feature “…one side of…” “could also be implied to be a feature of SU 606945”. In my view, this statement is an implicit admission that the feature is in fact capable of skilled interpretation, consistent with my finding.
I conclude that the claims are capable of skilled interpretation and that the claim requires the outer sheave to be located below the boom axis.
Fair basis / Description (“one side of”)
The test for fair basis [see Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 69, 98-99] is:
· whether the claim travels beyond or is inconsistent with the disclosure of the specification as a whole [Olin v Super Cartridge (1977) 180 CLR 236]; or
· whether there is a real and reasonably clear disclosure of the claimed invention in the specification [from Société Des Usines Chimiques Rhône-Poulenc v Commissioner of Patents (1958) 100 CLR 5 and cited with approval in Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79].
The opponent has submitted that there is no real and reasonably clear disclosure for the claimed feature (X) which appears only in the claims and in the consistory clause and that at page 12 there is a mere “coincidence of language” [Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 69] between the claims and the body of the specification.
I have already found that the term (X) imposes a requirement that the outer sheave must be located below the boom axis. The term is therefore quite clear in what it means. Further, I am unable to detect anything in the specification that is inconsistent with respect to this feature. In fact, the drawings in side elevation (e.g. figure 3) consistently depict the outer sheave as being located below the boom axis. In my view, that constitutes a real and reasonably clear disclosure of the invention. I recognize that there may be situations where a specification drawing may appear to visually disclose a feature, but there is a degree of uncertainty about what the skilled person would infer from the disclosure. However, I do not believe that this is one of those situations. In my view, figure 4 unambiguously shows the outer sheave as being located below the boom axis.
I find that the claims including the feature “to one side of a longitudinal axis of said (excavator) boom” are fairly based as required by section 40.
Full Description (“one side of”)
I believe that based on skilled interpretation of the term “one side of” and the disclosure in the drawings (e.g. figure 4) there is sufficient information to convey to the skilled person reading the specification what the invention is and how it is to be performed. As expressed in Kimberly-Clark v Arico (2001) 207 CLR 1, the test for full description is:
‘… will the disclosure enable the addressee of the specification to produce something within each claim without new inventions or additions or prolonged study of matters presenting initial difficulty?”
I conclude that the requirement for full description is met.
Section 40 - Conclusion
I have found that none of the grounds under section 40 have been established.
Priority Considerations
I have confirmed from Patent Office records that the claims are fairly based on matter disclosed in the priority documents (see paragraph 1) and are therefore entitled to the earlier priority.
Novelty
The effect of section 7(1) of the Patents Act and decided case law is that for a document to deprive a patent claim of novelty, the document must clearly teach all the essential features of the claim - see e.g. Meyers Taylor Pty Ltd v Vicarr Industries Ltd, (1977) CLR 228 and Rodi and Wienenberger AG v Henry Showell Ltd, (1969) RPC 367).
The level of disclosure must be such that the prior art document must provide “clear and unmistakable directions” to do what is claimed, see General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd, (1972) RPC 457 at pages 485, 486:
"To anticipate the patentees claim, the prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented ... A signpost, however clear, upon the road to the patentee's invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee."
In the hearing submissions relating to novelty, the opponent has relied on three documents only:
·JDFl – AU 11189/01 A1
·JDF4 –Derwent Abstract Accession No. D03465/14, Class Q42, SU 606945
·JDF5 - Derwent Abstract Accession No. 87-085184/12, Class Q42, SU1247471-A
Documents JDF2 and JDF3 below were additionally filed in evidence to support an earlier priority claim for JDF1:
·JDF2 – AU provisional PQ 3846 (priority document for JDF1)
·JDF3 – AU provisional PQ 6348 (priority document for JDF1)
The opponent’s main argument is that although the feature X defined in independent claims 1 and 21 is not disclosed in any of the prior art documents, it lacks clarity, full description and fair basis, and is therefore an invalid feature that could not confer novelty on the claims. However, I have already found that the specification meets the requirements of clarity, full description and fair basis with respect to feature X.
To assess the novelty of the claimed invention I must examine the prior art documents JDF1, JDF4 and JDF5 and ascertain as to whether the essential features of the invention are disclosed in each of the prior art documents.
Essential features
The issue of determining essential features was discussed in Catnic Components v Hill & Smith [1982] RPC 183. The judges in that case concluded inter alia that a feature is essential to a claim if (a) it was essential to the working of the invention or if it materially affected the way in which the invention worked; or (b) the applicant or patentee regarded the feature as essential.
The specification identifies the relevance of features X and Y. For example paragraph bridging pages 11 and 12 states that by maintaining ropes parallel, the bucket carry attitude is maintained substantially constant. It is also stated at page 12 that the position of the frame 23 (see figure 4) affects the spacing between the parallel hoist ropes thereby both maximizing bucket carrying capacity and extending the excavation and dump radii.
There is therefore, given the teaching of Catnic Components v Hill & Smith, no basis for me to infer that features X and Y do not materially affect the working of the invention. I therefore consider that features X and Y are essential features of the invention.
Comparison of essential features with features disclosed in citations JDF1, JDF4-JDF5
JDF1 published after the priority date of the present claims (paragraph 26) derives earlier priority based on JDF2 and JDF3. However, it fails to disclose claimed essential feature X (sheave on one side of axis). Consequently, the claimed invention is novel over JDF1.
JDF4 is a Soviet English abstract for SU 606945 that discloses a “dragline bucket and arm actuation mechanism”. Pulley 9 is an outer sheave which appears to be placed lower than, that is, on “one side of” the boom axis. However there is no unmistakable direction for feature X (sheave on one side of axis). Also, JDF4 does not disclose feature Y (parallelism of the hoist ropes). In fact, the drawing shows the lifting cables substantially triangulated.
JDF5 is a Soviet English abstract for SU 1247471 A that discloses a dragline excavator. Again, many of the claimed features are not disclosed in the abstract. The drawing shows a pronounced triangulation of cables 6 and 15 so feature X is missing although feature Y appears clearly shown in the drawing.
I conclude that the documents in evidence do not individually disclose all the essential features of the claimed invention. Claims 1 and 21 are therefore novel in view of the documents in evidence.
Claims 2-20 and 22-25 introduce additional limitations and therefore these claims are narrower in scope than claims 1 and 21 respectively. Claims 26 and 27 are “omnibus” claims limited to the specific features as shown in the examples of the invention.
I conclude that the invention claimed in claims 1-27 is novel over the prior art in evidence.
Inventive Step
To establish lack of inventive step, the common general knowledge in the art of the invention must be established and it must be shown that the claimed invention was obvious to the skilled person at the priority date, in light of common general knowledge alone or in light of common general knowledge together with prior art information (Section 7).
The opponent did not pursue lack of inventive step at the hearing nor filed any submissions or evidence in support of lack of inventive step. In the absence of evidence as to what was the state of the common general knowledge in the art at the relevant date, an assessment of inventive step in accordance with section 7 is not possible.
I note that the closest prior art document JDF1 was published after the priority date of the claims. Since only documents published before the priority date can be considered for inventive step under the Act, it is not possible to consider JDF1 for inventive step.
For the above reasons, I find that the claimed invention does not lack an inventive step.
Manner of Manufacture
The opponent did not pursue manner of manufacture at the hearing nor has filed any submissions or evidence in support of manner of manufacture. Even so, I note that given the contribution of features X and Y acknowledged in the specification (see paragraph 34), I do not believe that at the priority date the claimed invention would have been obvious on the face of the specification so as to fail the “threshold of patentability test” per NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1995) 183 CLR 655; (1995) 32 IPR 449 and Bristol-Myers Squibb Company v FH Faulding & Co Ltd (2000) 46 IPR 553.
I conclude that the ground of manner of manufacture has not been established.
CONCLUSION
None of the grounds of opposition were found to have been established.
I direct that the application proceed to sealing unless the Commissioner is served with a notice of appeal within 28 days from the date of this decision.
COSTS
In proceedings such as these it is usually the case that costs follow the event. I see no reason to vary that approach on this occasion.
Since the opposition has failed on all the grounds, I award costs in accordance with Schedule 8 against the opponent.
Jagdish Bokil
Delegate of the Commissioner of Patents
8 November 2007
Patent attorneys for the applicant : Fisher Adams Kelly, QLD
Patent attorneys for the opponent : Shelston IP, NSW
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