Helix Flight Manufacturing Machines Ltd v Robo Helix Pty Limited
[2024] APO 3
•30 January 2024
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Helix Flight Manufacturing Machines Ltd v Robo Helix Pty Limited [2024] APO 3
Patent Application: 2017233542
Title:Method and apparatus for forming a helical type flight
Patent Applicant: Robo Helix Pty Limited
Opponent:Helix Flight Manufacturing Machines Ltd
Delegate:Greg Powell
Decision Date: 30 January 2024
Hearing Date: 8 November 2023, in Video Conference
Catchwords: PATENTS – opposition to the grant of the patent under s 59 – novelty – claims have novelty – inventive step – on the evidence the claims are inventive – lack of clarity and support for the claims – claims provide a workable standard and are clear – claims do not claim matter that extends beyond what is justified and are supported – opposition unsuccessful – costs awarded
Representation: Counsel for the applicant: Andrew Fox SC
Patent attorney for the applicant: Chris Atichian and Tony Smeeton of Halfords IP
Counsel for the opponent: Vincent Powell
Patent attorney for the opponent: Anton Huggard of AJ Pietras IP Ltd
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2017233542
Title:Method and apparatus for forming a helical type flight
Patent Applicant: Robo Helix Pty Limited
Date of Decision: 30 January 2024
DECISION
The opposition is unsuccessful. Subject to appeal, I direct that the application proceed to grant.
I award costs according to Schedule 8 against Helix Flight Manufacturing Machines Ltd.
REASONS FOR DECISION
Background
Australian patent application 2017233542 (the application) in the name of Robo Helix Pty Limited (the applicant) was filed on 17 March 2017. The application claims priority from Australian provisional application 2016901014 with a priority date of 18 March 2016.
A request for examination was made on 15 February 2021. The application was accepted on 28 January 2022 and acceptance was advertised on 17 February 2022.
A Notice of Opposition was filed on 17 May 2022 by Helix Flight Manufacturing Machines Ltd (the opponent). A Statement of Grounds and Particulars (SGP) was filed on 17 August 2022. Evidence in Support (EIS) was filed on 17 January 2023 following an extension. Evidence in Answer (EIA) was filed on 17 April 2023. Evidence in Reply (EIR) was filed on 16 June 2023.
The opponent filed a written summary of submissions (the opponent’s written submissions) on 25 October 2023. The applicant filed their summary of submissions (the applicant’s written submissions) on 1 November 2023. I have found these documents to be helpful.
Applicable law
The Application was filed after 15 April 2013 and is governed by the Patents Act 1990 (the Act) and Patents Regulations 1991 as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (the Raising the Bar Act). Thus, the standard of proof that applies in the present case is the balance of probabilities.
The opponent has the onus to satisfy me, on the balance of probabilities, that a ground of opposition to the grant exists. If I am satisfied, I may refuse the application[1] or, where appropriate, give the applicant a reasonable opportunity to amend the relevant specification to remove any ground of opposition[2]. In addition, when deciding a case, I may take into account any ground on which the grant of a patent may be opposed, whether relied upon or not[3].
[1] The Act, subsection 60(3A)
[2] Ibid, subsection 60(3B)
[3] Ibid, subsection 60(3)
Evidence
EIS consists of:
·A declaration of Daniel Coats (Coats 1) dated 16 January 2023, accompanied by exhibits DHC-001 and DHC-002
·A declaration of Louis Joyeau (Joyeau) dated 13 January 2023
·A declaration of Sharon Burnet (Burnet) dated 12 January 2023, accompanied by exhibits SB‑001 to SB-004
EIA consists of:
·A declaration of Hayel Smair (Smair) dated 14 April 2023, accompanied by exhibits HS‑001 to HS-003
·A declaration of Dr Dejan Ninic (Ninic) dated 6 April 2023, accompanied by exhibits DN-001 to DN-006
·A declaration of Arthur Valentim (Valentim) dated 14 April 2023, accompanied by exhibits AV‑001 to AV-004
EIR consists of:
·A declaration of Daniel Coats (Coats 2) dated 16 June 2023
·A declaration of Marcus Heayns (Heayns) dated 14 June 2023, accompanied by exhibits MH-01 to MH-06
Grounds of Opposition
The SGP sets out the application is opposed on the basis of:
a)Lack of novelty;
b)Lack of an inventive step;
c)Lack of clarity and support for the claims (S 40(3))
At the hearing, the opponent maintained these bases of opposition, but with a reduced number of citations being considered under inventive step, and an additional citation being referred to under novelty.
The invention as described
The invention relates to the manufacture of individual flights, which are formed from circular metal plates (“blanks”) which have been transformed into a screw, helical or spiral shape of a certain pitch. Such blanks generally have a form of a split annular disc as shown in figure 11 of the applicant:
More particularly the invention is focused on an apparatus and a method of forming individual flights (sometimes called sectional helices). Individual flights are usually welded to a shaft in sequence to form a helical screw (or “flight”).
A partial view of such a screw formed from transformed blanks is shown in the evidence:
[4]
Generally, each individual flight forms one full “turn” of the helix. Flights often find application as the auger in screw conveyors for conveying materials or liquids. Other applications of flights could be as a pile, which get screwed into the ground to be part of a building foundation or other constructions.
[4] Coates 1 at [2]
The specification states:
“Current methods of manufacturing conventional sectional screw flights utilize two basic techniques. The first technique employs a set of appropriately shaped dies to press segments of a flight blank so as to form a complete flight section of predetermined pitch. Each section of flight is then typically welded to a shaft in sequence to form a complete conveyor screw … The second technique includes the use of two pairs of side plates. Each pair of side plates has a first fixed plate and a second movable plate, the second plate being movable relative to the fixed plate. The plates engage the flight blank so as to twist segments ranging from zero to 180 degrees. This method forms a flight to a predetermined pitch.”[5]
[5] Description at [0002]
While not stating what the problem is with these prior techniques, the specification proposes an apparatus for forming sectional helical flights:
The apparatus 10 includes a rigid main housing 12 with end walls 13, 14 and side walls 15, 16. The housing 12 has one end region of which forms a flight forming zone 17 and a compartment 18 accommodating a linear actuator drive 51. In use, a blank 80 is positioned inside the flight forming zone 17 with the ends 85, 86 of the blank (see figure 11 above) being held by support heads 20, 30 (not numbered in figure 1) respectively. A first support head 20 is mounted to mounting member 62 having a mounting plate 63 connected via a link 69 to a connecting rod 52. The connecting rod 52 connects the mounting plate to the linear actuator 51, so that the support head 20 can move in the direction of the main axis X-X. The first support head 20 is mounted to the mounting plate 63 such that it can move in a direction lateral to the main axis X-X. In the specification, this is achieved by mounting the first supporting head 20 on rods 25 (not shown) that are oriented vertically on the mounting plate 63. The second support head 30 is mounted on a plate 38 (not numbered in figure 1), which is rotatably mounted to an end wall 14 of the housing 12. In use, having mounted the ends of the blank in the respective support holders, the mounting member 62 is moved away from the end wall 14 to form the helix as the blank is elongated. The specification states that “[a]s the first support member is drawn in the direction of axis X-X, the second support member corresponds to the natural forming rotation of the flight and rotates about axis M-M. The flight forms to the natural helix path”[6].
[6] Ibid at [0019]
To assist with this formation, both the first support head 20 and the second support 30 are also mounted on rods 25, 35 which are respectively attached to the mounting plate 63 and plate 38 to allow the supports to move laterally with respect to the main axis X-X. Figure 8 shows the orientation of the support heads prior to moving the first support head:
As the first support is drawn away from the second support head (which is into the page in this view), the rods 25, 35 (not numbered in figure 8) allow the supports 20, 30 to move laterally with respect to the main axis X-X along respective axes W-W and Y-Y.
It is described[7] that the forming process could involve drawing the first support head further from the second support head further than is necessary and then disengaging the actuator such that the flight springs back to the preferred shape. Sensors could be present to measure this shape and, if the shape is incorrect, the actuator could be engaged again to move the first support head again so that, when the actuator is disengaged again, the flight springs back to the preferred shape.
[7] Ibid at [0071] and [0091]
Various holders which engage and secure the ends of the blank, and which are rotationally contained within the first and second support heads, are also described.
Claims
The specification ends with 21 claims. Claim 1 is the only independent claim as follows:
1. An apparatus for use in the formation of a helical screw flight from a blank having an outer peripheral edge, a central hole having an inner peripheral edge, and a split extending from the outer peripheral edge to the inner peripheral edge of the blank so as to provide for opposed side edge sections the apparatus comprising:
a drive
first and second support heads configured to hold the blank at the opposed side edge sections, the support heads being, arranged for relative axial movement with respect to one another during formation of the helical flight in a direction of a main axis from a preforming position towards a formed position in response to actuation of the drive
the first and second support heads being configured so as to be able to provide for a plurality of position adjustments including a lateral position adjustment whereby the first and second support heads can be displaced or moved laterally with respect to the main axis in a direction of respective lateral axes during formation of the helical flight and a rotational position adjustment wherein at least one of the first and second support heads can be rotated about a rotation axis which extends in a direction generally parallel to or coaxial with the main axis during formation of the helical flight.
The full claim set is in the Annex to this decision.
The person skilled in the art
It is well established that many of the issues in an opposition are answered by reference to the person skilled in the art (PSA):
“He is the person to whom the patent is addressed and who must construe it. He is the person whose knowledge will determine whether a patent is novel. He is the person who will judge whether a patent is obvious.”[8]
[8] Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980 at [70].
The hypothetical skilled person works in the field with which the invention is connected and is a non-inventive person or team likely to have a practical interest in the subject matter of the invention.[9] The experts providing evidence in an opposition are put forward by the parties as proxies for this PSA.
[9] Ibid at [70]-[72].
Experts
Mr Coats is the founder and sole director of the opponent. He states that the opponent, having “a team with expertise in mathematics, programming, automation, linear motion, engineering, fatigue analysis, hydraulics, and hydraulic cylinder manufacture”[10], manufactures machines to form sectional helices. Mr Coats states that his experience with forming sectional helices began in 1994 with his involvement with a number of companies specialising in screw pile design manufacture and installation, exposing himself to press-forming and pull-forming sectional helices. He states that he was employed by Piletech Pty Ltd, designing machines for pull-forming flights and he founded a company called Piletech NZ Ltd which was concerned with screw pile design, manufacture and installation development.
[10] Coats 1 at [3]
As well as being the director for the opponent, Mr Coats states that he works for Marine Flex Ltd, which manufactures and installs marine screw anchoring as well as elastic moorings and float systems associated with them. He states that this work has given him experience with roll-forming technologies which involve the continuous bending of a long strip of sheet metal into a desired cross-section or helicoid.
Mr Joyeau is the general manager of Joyeau Vis d’Archimede, France. He states that this company “has been a leader in the technology of forming sectional helices and helicoids for over 90 years over three generations”[11], with experience in both press forming technology and pull forming technology.
[11] Joyeau at [1]
Mr Heayns is the head of projects and design at J.P. Marshall Engineering which he describes as “specialists in the design, manufacture and installation of screw conveyors and augers, screw feeders and surge bins associated with mining, rendering, food processing, pulp and paper and numerous other bulk materials handling sectors.”[12] He states that he has personally been involved in design, manufacture and installation of augers and screw conveyors for over 12 years. Mr Heayns provides statements as to whether pull-forming of sectional helical flights would be common general knowledge in the art.
[12] Heayns at [2]
Ms Burnet is an IP paralegal at the opponent’s patent attorneys. Her declaration had the purpose of gathering, and placing into evidence, documents referred to in Coats 1.
Mr Smair is the founder and CEO of the applicant. While Mr Smair’s CV shows an extensive employment history in areas related to mechanical engineering, for the purposes of the area of forming flights, he refers to his employment at Brightec Pty Ltd, a company Mr Smair established, where he “became exposed to the flight forming industry and associated technologies”[13]. He states that he evaluated commercial systems and “[h]aving identified the … drawbacks with the available commercial devices and methods, … [he] established [the applicant] in December 2015, which is devoted to helical flight forming and associated technologies”[14].
[13] Smair at [8]
[14] Ibid at [19]
Dr Ninic is the principal engineer of Ninic Pty Ltd, which provides engineering data analysis solutions. He states that he has “extensive experience working with finite element analysis (FEA) software to model structural and mechanical components. FEA is a computational method for predicting how a product will react to real-world forces, vibration, heat, fluid flow and other effects”[15]. Dr Ninic was retained by the applicant to model (using FEA software) the formation of helix flights using two different, but related, devices of the applicant, as well as modelling the formation of a helix flight using a device depicted in a Japanese patent document, JP 04-105715, used in this opposition.
[15] Ninic at [1]
Mr Valentim is currently the engineering manager of an auger manufacturer in Brazil. The augers produced are used in screw conveyors which have a rotating helical blade housed within a tube, and are typically used for moving granular materials such as grains and seeds between two separated locations. Mr Valentim started at the auger manufacturer in 2009, left in late 2015 to work on car exhaust systems, before returning to the auger manufacturer in early 2019 as a product engineer working with helix flight forming. He notes that “[t]he helical flight forming machines used at [the auger manufacturer] are fabricated in house, and the earliest machine [they] have dates back to around 2006”[16]. Mr Valentim states that, in his current role, he is responsible for all manufacturing processes development, product development, research and development and all other engineering activities.
[16] Valentim at [7]
Opponent’s submissions
The opponent submitted that the PSA would be a person with a practical interest in the field of forming a sectional helical flight, including the design of machines to form the flights. In this regard the opponent submitted that Messrs Coats, Joyeau and Heayns were suitable PSAs. They noted that Mr Coats has been involved in the design and manufacture of machines for forming helices for about 30 years, Mr Joyeau is the general manager of a company that has been forming helices for over 90 years and Mr Heayns has been the head of projects and design at a company that designs, manufactures, and installs products comprising helices for over 12 years.
Applicant’s submissions
The applicant submitted that the PSA would include engineers working and having experience in the field of sectional helical flight formation, and engineers/designers with experience in designing helical flight forming machinery. The applicant stated that neither Mr Coats nor Mr Joyeau clearly set out their qualifications in their evidence.
As to Mr Coats, noting that Mr Coats was the founder and director of a competitor to the applicant, the applicant submitted that Mr Coats’s evidence contained nothing to suggest he had appropriate engineering or technical qualifications or experience in sectional helical flight formation that make him a PSA. They noted that he stated in his evidence that he:
“… put together a team with expertise in mathematics, programming, automation, linear motion, engineering, fatigue analysis, hydraulics, and hydraulic cylinder manufacture.”[17]
[17] Coats 1 at [3]
With respect to Mr Joyeau, the applicant submitted that, beyond stating that he was the general manager of Joyeau Vis d’Archimede, France, there was nothing in Mr Joyeau’s evidence that he had an engineering qualification or any technical experience in the field of helical flight formation.
Consideration
It seems undeniable that Mr Coats, Mr Heayns, Mr Smair and Mr Valentim have experience in the relevant area of technology and could serve as a proxy for the PSA. While Mr Coats is the founder of the opponent, it is also the case that Mr Smair is the founder of the applicant. It is further the case that both Mr Coats and Mr Smair have extensive experience in the art. I recognise that Mr Coats does not set out his qualifications, but he clearly states that he has been involved with the manufacture and development of press-forming helix technologies. I also note that Mr Coats states that he:
“… was involved in forming an association called ‘IHPENG’ which consisted of leading screw pile engineers from around the globe including from the UK, Canada, Japan, and Australia.”[18] (my bolding)
[18] Ibid at [6]
However, when it comes to Mr Joyeau I am not as comfortable. I noted in the hearing that simply stating, as he does in his evidence, that he is the general manager of a company that “has been a leader in the technology of forming sectional helices and helicoid for over 90 years over three generations”[19] did not give me a good sense of his level of exposure to the technology. It was not explained whether the general manager in this family-owned company had experience in the actual operation of the machines used by the company. The opponent pointed to Mr Joyeau’s evidence where he stated:
“I believe I am well placed to comment on this in view of my expertise in this area and my opinions are based on my specialist knowledge acquired by virtue of working for Joyeau Vis d’Archimede for many years.”[20]
The opponent submitted that the family nature of the company meant that Mr Joyeau was intimately involved in the manufacture of the machines and flights.
[19] Joyeau at [1]
[20] Ibid at [4]
I am not so sure. There seems to be a gap here that I pointed out to the opponent at the hearing. The opponent agreed that Mr Joyeau’s experience “could have been spelled out in more detail in the declaration”.[21] That it was not is regrettable. The upshot is that I would accord less weight to the evidence of Mr Joyeau.
[21] Transcript at 15:17
Claim construction
While the rules of construction for an Australian patent specification are well summarized in Decor Corp v Dart Industries[22], the correct application of these rules to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd:
“… the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear … while the claims define the monopoly claimed in the words of the patentee's choosing, the specification should be read as a whole … it is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification … terms in the claim which are unclear may be defined or clarified by reference to the body of the specification.”[23]
[22] [1988] FCA 399; 13 IPR 385 (“Decor”)
[23] [2009] FCAFC 70; 81 IPR 228 at [118] – [120]
I would also note what was said in Eli Lilly and Company Limited v Apotex Pty Ltd:
“It is well settled that the Court should, from the outset, approach the task of patent construction with a generous measure of common sense. The Court must place itself in the position of a person skilled in the relevant art, being the subject matter of the patent. From this perspective, the patent is to be read as a whole, in the context of the specification and in light of the prevailing common general knowledge and state of the relevant art at the priority date.”[24]
[24] [2013] FCA 214 at [139]
In the present case there are a few phrases that require discussion. These are:
(i)“a main axis”
(ii)“displaced or moved laterally with respect to the main axis in a direction of respective lateral axes”
(iii)“generally parallel to or coaxial with the main axis”
(iv)“during formation”
“a main axis”
The opponent submitted that, accepting the “axis” to be a line, the term “in a direction of a main axis” in the claims would include movement of the support heads in a straight line along that axis, but would also include relative axial movement of support heads in a direction that was not perfectly straight. They noted the decision in Catnic Components v Hill & Smith Ltd[25] and submitted that a purposive construction allowed for movement of the support heads that deviated from the line of the main axis, and should not be limited to movement only along the main axis.
[25] (1982) RPC 183 (“Catnic”)
The applicant submitted that a PSA would understand “in a direction of a main axis” to define movement of the support head along the main axis. They noted that Mr Smair had given a definition of “axis” from the Macquarie Dictionary[26], and that it was clear that an axis was a straight line. The applicant noted that Mr Coats had agreed[27] that an axis was a straight line.
[26] Smair at [68]
[27] Coats 2 at [23]
I agree with the applicant. For the present application, an axis is a straight line. As noted by Mr Smair, the Macquarie Dictionary relevantly defines “axis” as:
1.the line about which a rotating body, such as the earth, turns.
2.the central line of any symmetrical, or nearly symmetrical, body: the axis of a cylinder; the axis of the building.
3.a fixed line adopted for reference, as in plotting a curve on a graph, in crystallography, etc.
While I note the reference to a “curve” in the definitions, the definition is not referring to that curve, but is, instead, referring to the axes (e.g. the x-axis and y-axis) used to define the curve.
Moreover, as to the applicant’s submissions that the support heads must move “along the main axis”, as the main axis does not have a defined location in the claim, the main axis can simply be taken to be the line along which the support heads are constrained to moved apart.
“displaced or moved laterally with respect to the main axis in a direction of respective lateral axes”
The opponent submitted that this feature should not be construed so as to bring in physical features shown in the figures but not defined in the claims. Specifically, while the application describes each support head as having a body portion and the body portion moves along rods in the direction of axes W-W and Y-Y, the claim does not include this detail. In the opponent’s opinion, “lateral” simply means “to the side of” and, I interpolate, includes any mechanism of achieving this sideways movement.
The applicant submitted, following the evidence of Dr Ninic, that the phrase meant moving in a linear direction which was lateral to the main axis, and that this linear motion was along a lateral axis.
In my opinion, the applicant’s position is the correct one. Clearly, given my conclusion that an axis is a straight line, the reference to “lateral axes” is a reference to the straight lines on which this movement is constrained to occur. While the words do not limit the claim to the specific mechanism of achieving this movement to the specific embodiment in the application (see figure 8 above for example), it does restrict this movement to being linear movement. Moreover, purely for completeness, it goes without saying that these lateral axes would each be on a separate plane extending radially (i.e. at right angles) from the main axis, although neither axis is required by the claim to lie along a radial line of this plane.
“generally parallel to or coaxial with the main axis”
The opponent submitted that the word “generally” meant that this phrase included within its scope situations where at least one of the support heads is rotated about a rotation axis that is not exactly parallel to or coaxial with the main axis.
The applicant submitted that “generally parallel” in the context of the application defined an axis which was parallel, or close enough in appearance to parallel. They noted the Commissioner’s decision in Simco Mining Products and Services Pty Ltd v CQMS Pty Ltd where it was stated:
“I note that modern machine parts seldom have simple geometry, hence the presence of the word ‘generally’ which implies some degree of deviation from a perfect rectangle. With that in mind, I consider it important for the proper interpretation the question of how a particular floor, viewed as a flat geometric shape, would be described in words, given that only a limited number of simple geometric shapes have specific names (e.g. circle, rhombus, trapezoid, rectangle, square, triangle, etc.). In my view, a floor viewed as a geometric shape would reasonably be described as being generally rectangular only if it is close enough in appearance to a rectangle”.[28]
[28] [2019] APO 5 at [65]
As such, the difference between the parties is one of degree. How far from exactly parallel does something need to be before it is not “generally parallel”? In this regard, I agree with the applicant. It is quite clear from the figures that the axes are shown very much as either parallel to each other or at right angles. While there is obviously going to be some latitude given the words used in the claim, construed as a whole, the specification is taking a fairly strict approach as to what is, and is not, parallel. That is, for this application, something is “generally parallel” if it is not noticeably askew to the reference line being used. To an extent, this is somewhat along the same lines as the question in Catnic, where “extending vertically” was taken to include minor variants which made no material difference to the working of the particular element claimed, unless the words of the claim made it clear the variants were being excluded. Here, the applicant has made it clear from the words of their claim, that they are excluding elements which are noticeably not parallel.
“during formation”
The opponent submitted that these words did not limit the formation of the sectional flight to be carried out in one continuous operation. In the opponent’s submission, the sectional flight could be formed in stages with pauses between movements. In the opponent’s opinion, to exclude this option from the claim would be to import features into the claims from the preferred embodiments.
The applicant submitted that a plain reading of the specification supported a view that “during formation” was the deformation of the blank into a helical flight.
I do not think there is a difference between the parties’ positions. The claim uses the words “during formation of the helical flight” which are clearly referring to the deformation of the blank. These words make it clear that the process of setting up the blank in the machine by, for example, inserting the blank into the pulling machine, and engaging whatever clamping mechanisms that may be present could not be said to be occurring during formation of the sectional flight. Equally, the claims do not limit the formation to involve a continuous, non-stop motion of the support heads to produce the sectional flight. Indeed, the description mentions[29] reengaging the first support head after an initial deformation movement so as to stretch the blank a bit more so that, when the head is disengaged again, the flight springs back to the preferred shape (which it did not have after the first attempt). This is not describing a non-stop process to arrive at the correct helical shape.
[29] Description at [0091]
A note on the scope of claim 1
I think it is important to recognise that claim 1 is defining restrictions placed upon the type of movements that the support heads can make. The claim does not define the actual path taken through space by the support heads as they move apart. As defined, the support heads can only move in 3 ways. Firstly, they move apart from one another on a straight line (this is the “main axis”). Secondly (and, to be pedantic, thirdly), each support head can move along another straight line, with each support head having its own straight line (these are the “respective lateral axes”). Finally, at least one support head can rotate about another axis that is generally parallel to the main axis (this is the “rotation axis”). While the path taken in space by the support heads could effectively be curved, the claim defines that the heads are constrained to having only certain degrees of freedom. In this opposition, the opponent focussed on the path taken by the heads, while the applicant focussed on the degrees of freedom.
Novelty
The opponent submitted that the claims lacked novelty in light of JP 04-105715 (D1). As D1 was in Japanese, a translation of this document was supplied by the opponent with its evidence.
It is a requirement of subsection 18(1) of the Act that the invention, so far as claimed in any claim, is novel. Subsection 7(1) provides that an invention is taken to be novel unless it is not novel in light of the prior art base. Prior art information made publicly available in a document or through the doing of an act forms part of the prior art base for the purpose of novelty if it was published before the priority date of a claim.
It is well established that the general test for lack of novelty is the reverse infringement test, as set out by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd:
“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.” [30]
[30] Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19; 137 CLR 228 at 235, [20].
This test is satisfied if the alleged anticipation discloses all the essential features of the invention as claimed.[31] The level of disclosure required is set out in General Tire & Rubber Co v Firestone Tyre and Rubber Co Ltd:
“If the prior inventor’s publication contains a clear description of, or clear instructions to do or make, something that would infringe the patentee’s claim if carried out after the grant of the patentee’s patent, the patentee’s claim will have been shown to lack the necessary novelty, that is to say, it will have been anticipated. … if carrying out the directions contained in the prior inventor’s publication will inevitably result in something being made or done which, if the patentee’s patent were valid, would constitute an infringement of the patentee’s claim, this circumstance demonstrates that the patentee’s claim has in fact been anticipated.
If, on the other hand, the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee’s claim, but would be at least as likely to be carried out in a way which would not do so, the patentee’s claim will not have been anticipated, although it may fail on the ground of obviousness. To anticipate the patentee’s 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.” [32] (citations omitted)
[31] Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40;(1990) 91 ALR 513 at 517.
[32] General Tire & Rubber Co v Firestone Tyre and Rubber Co Ltd [1972] RPC 457 at 485-486.
D1 discloses a machine for forming helical flights where two ends of a blank are clamped and pulled apart. Figures 1 and 2 of D1 show, respectively, the starting and finishing positions of this process:
The blank 2 is clamped 29, 30 by two support heads 25, 27 which are pulled apart via a hydraulic cylinder 12. The support heads are respectively mounted via various linkages 19, 20, 22, 23 to a base 4, which remains stationary, and a moveable part 6. Operating the hydraulic cylinder 12 causes the rod 14 of the cylinder to extend, moving the moveable part 6 with it. This causes the support heads 25, 27 to move apart. The support heads 25, 27 are rotationally mounted via spindles 16, 21 and can rotate during flight formation. The linkages can be adjusted to change the inclination angles of the spindles 16, 21. D1 states that:
“the angle of inclination is changed at intervals within a range of about 60~80 degrees, corresponding to the angle of inclination of the first support axis 16”.[33]
[33] D1 translation at page 5 lines 10–12
Opponent’s submissions
The opponent submitted that D1 disclosed the movement of support heads in the direction of a main axis. The opponent also submitted that D1 disclosed lateral position adjustment with respect to the main axis of a support head during formation as indicated by the letter “L” in figure 2. The opponent further submitted that there was rotational position adjustment. They noted that D1 stated:
“… as indicated by the symbol (L) in Figure 2, the annular base plate 2c is eccentrically centered with the first and second support shafts 16, 21, so that the annular base plate 2c twists in the direction of the arrow (p) in the same figure.”[34]
[34] Ibid at page 6 lines 6–8
The opponent submitted that the “main axis” of claim 1 could be taken to extend either along the axis of the spindle 16 or along the hydraulic cylinder 12. They noted that the spindle 16 could be moved to the left-most hole 17 which would, in their opinion, align the axis of the spindle 16 with the axis of the cylinder 12, on a purposive construction. The opponent also submitted that, given the fact that the application described lateral movements and rotational movements of one or more of the support heads as they moved apart, then “in a direction of a main axis” could not mean the support heads moved in a perfectly straight line. The consequence of this was that the movements of the support heads in D1 fell within the scope of the claim.
The opponent submitted that D1 disclosed lateral position adjustment as defined since each clamp 29, 30 gripping the blank moved relative to the main axis because of the rotation of each support head 25, 27 as they were moved from their starting position.
Applicant’s submissions
The applicant submitted that claim 1 of the application required a lateral position adjustment and a rotational position adjustment, with these movements occurring along different axes. The applicant stated that, in D1, the lower support head 25 was vertically fixed, the upper support head 27 could move vertically during formation and, as a result of that vertical movement, the clamps 29, 30 rotate. The applicant stated that the opponent’s position that lateral position adjustment occurs because of the rotation of each support head could not be interpreted as lateral movement along an axis. In the applicant’s opinion, there was no lateral movement along a lateral axis, which extended laterally with respect to the main axis.
Consideration
I do not consider that the claims lack novelty in light of D1.
A first point of difference is the orientation of the rotational axis. As noted by the applicant, Mr Coats identified the main axis as coinciding with the axes of each spindle in the starting position:
[35]
[35] DHC-001
However, the support heads are not moved apart along that line. The support heads move apart along a line parallel to the cylinder 12. As noted by Mr Smair, the line drawn by Mr Coats is a rotation axis:
[36]
[36] Smair at [64]
As I have noted in my construction of the term, the support heads move apart along a line, with that line being the main axis. Clearly, in D1 the line that this movement happens on is the one that Mr Smair has labelled “Main axis”, and this “Main axis” coincides with what Mr Smair has labelled as the “Drive direction”. That being the case, whether the “main axis” of the claims is taken to be either the “Main axis” or “Drive direction”, it is immediately obvious that the rotational axis of the support heads is not parallel to either of them, either in the strict mathematical sense or “generally”. Consequently, D1 does not disclose a “rotation axis which extends in a direction generally parallel to or coaxial with the main axis” as required by claim 1. This remains the case even if the angle of inclination of the rotation axis is changed to its maximum of about 80 degrees. A 10-degree difference is not what I consider to be within the realm of “generally parallel” as I have construed that term.
Furthermore, I do not agree that the support heads 25, 27 of D1 move laterally with respect to the main axis in a direction of respective lateral axes. Even if it is assumed that what is to be focused upon is the fact that the clamps 29, 30 of D1 end up being laterally spaced in the sense that distance “L” exists between them (as shown in figure 2 above), as the applicant has said, that distance is the result of rotation and not as the result of movement along an axis. As discussed under construction, an axis is a straight line, and it is clear that the distance “L” was not achieved with even a modicum of straight-line movement of the clamps along axes that are lateral with respect to the main axis. The fact that a straight line can be drawn between a clamp’s starting position and its finishing position does not constrain the movement to one along a straight line. The opponent has been too ambitious with their reading of D1.
I note that these same conclusions apply to the other embodiments in D1 where the support heads are moved in an analogous way to the embodiments of the present application. Looking at figures 6 and 7 of D1:
it is immediately apparent that the same conclusions as to alignment of rotational axes and “lateral” movement of the clamps apply to these embodiments.
The claims are novel in light of D1.
Inventive step
The statutory basis for inventive step for this opposition is set out at s7(2) and s7(3) of the Act as it stood after commencement of the Raising the Bar Act, and is reproduced below:
(2) For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed (whether in or out of 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 that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have combined.
The question of obviousness has been extensively considered by the courts. Aickin J stated in Wellcome Foundation Ltd. v VR Laboratories (Aust) Pty. Ltd.:
“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.”[37]
[37] [1981] HCA 12 at [45]; [1981] HCA 12; (1981) 148 CLR 262 at 286 (“Wellcome Foundation”)
In Aktiebolaget Hassle v Alphapharm Pty Ltd, the High Court accepted the approach taken in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd[38] where Graham J posed the reformulated Cripps 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 combination] in the expectation that it might well produce a [useful or better result]?”[39] (italics in the original)
[38] [1970] RPC 157 at [187]
[39] [2002] HCA 59 (“Alphapharm”) at [53]
Moreover, the relevant authorities have also made it clear that the question of obviousness is a question of fact that is to be determined by evidence.
In the present case, the opponent argued that the invention as defined in claim 1 lacks an inventive step in light of:
(i)the common general knowledge alone;
(ii)the disclosure of D1 in combination with the common general knowledge;
(iii)the disclosure of JP 2005-52851 (D2) in combination with the common general knowledge; and
(iv)the disclosure caused by prior use of the Piletech Machine (D7) in combination with the common general knowledge
Assessment of inventive step
A common approach to determining inventive step is the problem-solution approach as per Wellcome Foundation. Once the problem has been formulated and the common general knowledge and the prior art base has been determined, the question of whether the claimed solution is obvious can then be addressed.
Moreover, the Full Bench of the Federal Court in AstraZeneca AB v Apotex Pty Ltd[40] effectively stated that when formulating the problem, it is not permissible to incorporate information that is not available to the person skilled in the art as either common general knowledge or information available under section 7(3).
The problem being addressed
[40] [2014] FCAFC 99 at [202]-[203]
Opponent’s submissions
The opponent focussed on two paragraphs of Mr Smair’s evidence in which he stated:
“When considering pull-forming a helix, there are several problems that must be overcome. One problem relates to alignment issues with edges of adjacent flights. If the edges do not align, it makes it difficult to weld or otherwise join the helical flights end to end to form for example an auger. Another problem concerns the circularity of the inner passage when viewed along a longitudinal axis. If the central passage is not circular in end view, it can be difficult to insert a shaft and/or attach the shaft to the helical flights by welding”[41],
and
“[D1] relates to an apparatus for forming auger blades. In that document, problems are described regarding the ‘centre-hole’ is oval shaped and the ‘end-edges have discrepancies’. The problems substantially correspond to those I described [in the paragraph quoted above]. [D1] is the only document which forms part of the evidence identifies the problems I discussed … and that document discloses a structurally very different device which seeks to overcome those particular problems.”[42]
[41] Smair at [24]
[42] Ibid at [63]
The opponent agreed that the problems identified by Mr Smair were the correct ones, although they disagreed with Mr Smair’s assertion that D1 and the invention of the application were very different devices.
Applicant’s submissions
The applicant was coy about what it considered the problem to be solved. While their submissions contained the phrase “problems addressed by the present invention”, they did not explicitly identify what they considered the problem to be solved was. However, they did note that:
“D1 discusses a problem associated with pull-forming apparatus which Smair needed to address when producing his own apparatus.”[43]
As this is referring to the passages that the opponent has quoted, I take it to mean that the applicant does not disagree with the opponent on what problems are being addressed by the invention.
[43] Applicant’s written submissions at [176]
Consideration
It seems reasonable to proceed with the understanding that the problem being addressed by the present invention was to produce a helical flight with edges that allow good alignment with adjacent flights and with good circularity of the inner passage when the flight is viewed along what would be a longitudinal axis of the screw comprised of assembled flights.
Common general knowledge
In Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Limited, Aickin J. stated:
“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.”[44]
[44] (1980) 144 CLR 253 at page 292
In Alphapharm, it was indicated that information should not be treated as part of the common general knowledge (CGK) “in the absence of evidence of its general acceptance and assimilation”[45].
[45] Alphapharm at [31]
The opponent submitted that pull-forming to form a sectional helix was common general knowledge (CGK). They referred to various points in the evidence[46] where the declarants stated that they were exposed to, or were aware of, the technique of pull-forming flights.
[46] Coats 1 at [4]–[5], Joyeau at [6], Heayns at [14], [16]–20, MH-05 and MH-06
The opponent also submitted that the CGK included rotational and lateral movement of support heads as part of a technique to form sectional helices. The opponent submitted that the evidence[47] showed that it was CGK for helix-forming apparatus to have support heads, configured to hold a blank at opposed side edge sections, that both pull in and rotate simultaneously to form a sectional helix.
[47] Coats 1 at [14]–[15], [35]–[43], DHC-002 and DHC-003, Joyeau at [8]–[11]
pull-forming
The applicant submitted that the evidence did not establish that pull-forming of flights was CGK. In the applicant’s opinion, the declarants for the opponent had simply referred to matters which they said were “known” or “well known” without any corroboration. The applicant disagreed that a pull-forming apparatus, where the side edges of a blank were held by two supports and drawn apart from one another, formed part of the CGK. While accepting a process known as “Continuous helix forming”, or “helicoid forming”, was known, a process in which a continuous, one-piece helix is formed by stretching out a coil, the applicant submitted that this process had minimal relevance to the pull-forming process of the present invention, which commenced with a substantially circular blank, as opposed to effectively stretching out a coil or spring. The applicant submitted that the opponent had referred to pull-forming as an all-embracing concept covering all pull-forming techniques, while the evidence provided by the opponent had not established that any pull-forming techniques was CGK.
I think it could be said that pull-forming as a concept might be well-known. By this I mean that it could be said that it was known that something could be placed between two holders, and the holders could be pulled apart. However, I do not think that it has been established on the balance of probabilities that pull-forming a helical section using a blank was CGK.
Mr Coats stated in his evidence:
“My experience with helix forming began prior to founding my Company. I was initially involved with a group of companies specializing in screw pile design manufacture and installation in 1994. Through this association I became exposed to both press-forming and pull-forming of sectional helices. As the names suggest, in press-forming a helix ‘blank’ (a flat plate) is placed in a machine that presses the edges of the blank to make it helical. In pull-forming the blank is placed in a machine, the edges are gripped by opposing heads, and the blank is stretched by the heads moving away from each other, or at least one head moving away from the other, while also allowing the helix to rotate and pull in to create a helical shape (eg either part of one turn or more of a flight/helix).”[48]
[48] Coats 1 at [4]
Mr Smair accepted that continuous helix forming was known. However, I note that he states in his evidence:
“As such, there were at the filing date of my provisional patent application limited commercial applications in which continuous helicoid forming is applicable, and the process is not suited to the formation of large diameter helices, or helices formed from thick plate”[49],
and
“At paragraph 10 Coats says ‘it is well known in the industry, and has been since long before the priority date, that the blank has to be cut to the correct size so that once stretched or formed by press-forming or pull forming it fits correctly around a shaft’. I don’t agree with this statement, as it suggests that ‘pull-forming’ was well known, which is not correct, as to the best of my knowledge, press forming was the only method in commercial use worldwide for forming a flat blank into a helical flight. As already discussed, continuous helix forming (helicoid manufacture) was known, and that process is completely different and does not use a plate blank as the source material, noting that it involves stretching a spring.”[50] (italics in original)
[49] Smair at [17]
[50] Ibid at [42]
While corroborating evidence is not an absolute requirement, in the occurrence of contradictions in evidence, it is useful. As noted by the applicant, Mr Coats’s evidence as to the nature of prior pull-forming arrangement is fairly vague. Given the scant information, the lack of corroborating material for Mr Coats’s statements is unfortunate.
I also note that Mr Joyeau stated that:
“I can confirm that it was common general knowledge in the area of forming a helix flight much prior to 18 March 2016 as follows.
Both sectional helices and helicoid could be produced by both pull-forming and press-forming.”[51]
However, I have found that I accord less weight to the evidence of Mr Joyeau than that given to others. In any event, like Mr Coats, there is a lack of corroborating evidence for Mr Joyeau’s position.
[51] Joyeau at [5]–[6]
I recognise that Mr Heayns stated:
“… in my own experience I am aware of what is known as “pull-forming” as a technique to create helices which are used for augers, and for creating augers which are formed from a number helices joined together and attached to a shaft … I am aware that this technique has been around for at least 25 years but I believe it has been around a lot longer than this. In its simplest form, it is the most obvious and easiest way to create a helix from a blank.”[52]
[52] Heayns at [14]
It is also the case that Mr Heayns provided YouTube videos and emails with which he sought to corroborate his position. However, as noted by the applicant, the emails are dated after the priority date and one video has the same date as the priority date. As such they are not permissible. I would also observe that the video shows what I understand to be continuous helix forming, and not pull-forming with a blank. In addition, the emails refer to forming “flights” by pulling, and I note that Mr Heayns stated:
“A “flight” is another name for an auger.”[53]
As such, given that an auger is the whole length of the helix, and not just one part, these emails could also be taken to be referring to continuous helix forming.
[53] See ibid
The remaining video provided by Mr Heayns is dated prior to the priority date and shows what might be viewed as pull-forming blanks into helical shapes. However, one swallow does not make a summer. There is no evidence that this machine is widely known, and the evidence does not demonstrate a general acceptance and assimilation of pull-forming helical flights.
As such, on the evidence before me and the balance of probabilities, I cannot be satisfied that pull-forming was CGK in the art.
rotational and lateral movement of support heads
The applicant disagreed that rotational and lateral movement of support heads was part of the technique to form helices, especially in the realm of pull-forming.
Given my conclusion with respect to pull-forming, it cannot be said that rotational and lateral movement of support heads during pull-forming was CGK. If the opponent was merely referring to rotational and lateral movement of support heads per se as CGK, regardless of the forming method, I do not see the evidence referred to by the opponent as supporting this conclusion.
Mr Coats states:
“In the period while working for Piletech NZ Limited I became exposed to many other forming machine technologies and determined, whether it be press forming or pull forming, that one had to take account of a number of axes simultaneously during the forming process. Helices need to be kept on centre as they are formed and failure to do so would result in distortions. I was able to learn more about many older technologies for forming both sectional helices and helicoids which demonstrate different ways of taking account of all axes during forming.”[54]
There is a gap between “taking account of all axes during forming” and constraining rotational and lateral movement of support heads.
[54] Coats 1 at [16]
Although of less weight, Mr Joyeau states:
“The blank edges are typically held by the support heads at either end. During forming, simultaneously the heads must rotate to allow the helices to pull in in a torsional action taking account of extra coverage and stretch of material until the helices fit the required specification. It is necessary that the helices’ ends must be forced to adjust laterally, to remain on centre as the machine heads rotate. These axes of movement, rotationally and laterally, allow the middle of the helix to remain centred, avoiding distortion.”[55]
While it is not entirely clear what Mr Joyeau had in mind when he stated that it was “necessary that the helices’ ends must be forced to adjust laterally”, this passage does not specifically state that the support heads move both rotationally and laterally.
[55] Joyeau at [10]
It follows that, on the balance of probabilities, it has not been established that rotational and lateral movement of support heads is CGK.
Lack of an inventive step in light of the CGK alone
It follows from the above discussion, that the opponent’s case that the claims lack an inventive step in light of the common general knowledge alone must fail.
Lack of an inventive step in light of D1 when combined with the CGK
There seemed to be agreement between the parties that D1 solved more or less the same problem as the present invention. I agree that this is the case. As I noted at [79] above, Mr Smair sets out the problem he was seeking to solve and notes that D1 seeks to solve the same problem.
As I have found under “Novelty”, D1 does not disclose (i) the support heads moving apart along a line that is, or is parallel to, the main axis, and (ii) that the support heads of D1 move laterally with respect to the main axis in a direction of respective lateral axes. The opponent submitted that, as D1 fully solved the problem, the invention lacked inventive step as it was no more than a workshop improvement. The opponent stated that the solution in D1 is achieved by the support heads being moved away from one another along an axis while the support heads also rotate to form a true form helix. Moreover, in the opponent’s opinion, as the support heads rotate, they also necessarily move laterally with respect to the main axis. The opponent submitted that the PSA would appreciate (i) that position adjustments are known, (ii) that lateral position adjustments can be effected in different ways, and (iii) that, in engineering, it was well known to have a body move along a rod or set of rods. They submitted that it would not take any inventive step on the part of the PSA to incorporate a body and rod arrangement into support heads to provide an alternative way to achieve the lateral movement required.
Additionally, applying the Cripps test, the opponent submitted that the PSA would directly be led as a matter of course to try the approach claimed in the application. In the opponent’s opinion, as D1 showed it was already known to apply lateral and rotational movement, there would be an expectation by the PSA that the claimed method of the application could be tried and done during the formation of the helical flight, producing at least a useful alternative or improved result.
The applicant submitted that, in particular, the lateral movement of the two support heads defined in claim 1 was neither disclosed in D1 nor part of the CGK. In the applicant’s opinion, lateral movement of the support heads had never been contemplated. The applicant submitted that no reasons were given by the opponent as to why the subject matter of D1 would lead the PSA to incorporate the specific lateral movement of the claimed invention.
I agree with the applicant. The claim is very specific as to the lateral movement the heads rea being constrained to make. It is lateral movement “with respect to the main axis in a direction of respective lateral axes”. As I have already observed when construing claim terms, an axis is a straight line, and it is clear that D1 has no straight-line movement of the clamps. The fact that a straight line can be drawn between a clamp’s starting position and its finishing position does not make the movement along a straight line. While the opponent made submissions about workshop improvements, there is no evidence on file to establish that it was well known to have a body move along a rod or set of rods. Moreover, assuming it could be said that it was well known to have a body move along a rod or set of rods, there is no evidence as to how the PSA would go about modifying the apparatus of D1 to incorporate lateral movement of the clamps along a straight line, or what would motivate them to do so. The support heads of D1 are so different to the heads of the present invention that, to my mind, wholesale changes would have to be made to the extent that the essence of the apparatus of D1 would fundamentally change. This would not be a workshop improvement.
I cannot find that the claims lack an inventive step in light of D1.
Lack of an inventive step in light of D2 when combined with the CGK
D2 discloses a machine for forming helical flights where two ends of a blank are clamped and pulled apart. Figures 5 and 1 of D2 show, respectively, the starting and finishing positions of this process:
D2 discloses a blank 11 from which a sectional helical flight 12 is formed. The cut ends of the blank are gripped by a fixed first support head 15 and a moveable second support head 16 which is mounted on the end of a piston rod 23. The second support head 16 also engages a guide rod 33 such that the axis of the guide rod 33 and the axis of the piston rod 23 are aligned. The height of the piston rod 23 and the guide rod 33 above the base 20 can be adjusted via respective elevating devices 26, 31. In operation, the blank 11 is placed in the apparatus, the height of the first and second support heads 15, 16, the piston rod 23 and the guide rod 33 are adjusted (if necessary) so that the axis centre of the piston rod 23 and the guide rod 33 are the same as the axis centre of the blank 11. Subsequently, second support head 16 is moved away from first support head 15 by advancing the piston rod 23 via a hydraulic cylinder 22. The piston rod 23 can rotate around the centre of its axis, thereby allowing the second support head 16 to rotate (if required) as the blank is formed into a sectional helix.
Having noted that D2 disclosed most of the features of claim 1, to the extent that the claim required lateral movement of the two support heads, the opponent submitted that:
“By virtue of the second support head (clamping device) rotating about the axis, there will inevitably be lateral movement or displacement of the head. Both support heads can also be displaced or moved by the elevator 26, effected by raising or lowering the jack 31 and the fixed stand 21.”[56]
[56] Opponent’s written submissions at [40]
The applicant submitted that, like their arguments against D1, D2 contained no disclosure of lateral movement of the support heads during formation of the helical flight in a direction of respective lateral axes. In the applicant’s opinion, the PSA would need to contribute significant inventive input to arrive at the invention of claim 1.
The opponent has not made out its case. The position it has taken with respect to lateral adjustment does not accord with the wording of the claim. In this regard, the claim requires the lateral adjustment to occur “during formation”. I have interpreted this term to require the event to occur when the deformation to form the sectional flight is occurring. Assuming that the adjustment of the support heads 15 16, the piston rod 23 and the guide rod 33 could be said to be lateral adjustment “with respect to the main axis in a direction of respective lateral axes” (as required by claim 1), there is nothing in D2 to suggest any lateral adjustment occurs during formation. Indeed, D2 states:
“Furthermore, when the metal plate 11 is placed in the screw blade forming apparatus 10, the height of the first and second clamps 15 and 16 and the guide rod 33 should be adjusted so that the axis center of the piston rod 23 is the same as the axis center of the metal plate 11.
The opposite end 40 of the metal plate 11 is clamped by the lifting tool 41 to lift the metal plate 11, and the first and second cut ends 13, 14 are moved to the first and second clamps 15, 16, respectively. Then, as shown in Figure 4A, secure the first and second cut ends 13, 14, respectively with the bolts 17. Further, the tip portion 33a of the guide rod 33 of the guide device 30 is engaged with the concave 33b of the second clamp 16 so that the axial centers of the piston rod 23 and the guide rod 33 are substantially aligned.
Next, to form the spiral on the metal plate 11, the drive unit 24 is driven to move the piston rod 23 to a predetermined distance (Po), for example, 1500 mm. At this time, the piston rod 23 is guided by the guide rod 33 and moves in the axial direction of the piston rod 23, and the second clamp 16 attached to the tip of the piston rod 23 moves in the axial direction of the piston rod 23. Further, as shown in Figure 6, since the second clamp 16 is rotatable about the axis of the piston rod 23, when the metal plate 11 is helically formed, it rotates freely to the helical angle θ of the screw blade 12, for example, a predetermined angle of 5 to 30 degrees.
When the screw blades 12 is formed, remove the bolts 17 of the first and second clamps 15, 16, and remove the formed screw blades 12 from the first and second clamps 15, 16.”[57]
Clearly, the lateral adjustment described by D2 is not happening during formation.
[57] D2 at [25]–[27]
Moreover, as was the case for D1, there is no evidence as to how the PSA would go about modifying the apparatus of D2 to incorporate lateral movement of the support heads along a straight line during formation of the helical flight, or what would motivate them to do so. The support heads of D2 are very different to the heads of the present invention. Wholesale changes would have to be made which would completely change the nature of the apparatus of D2.
I cannot find that the claims lack an inventive step in light of D2.
As an aside, I note that the opponent had stated in their written submissions:
“We also submit that claim 1 is not novel in view of [D2] and rely on the breakdown of the claim elements in Coats 1, paras 58-67.”[58]
During the hearing I enquired whether the opponent was raising a lack of novelty point in light of D2, despite D2 not being particularised under the novelty ground in the SGP. The opponent indicated their novelty focus was on D1, but, if I were to consider that all the features of claim 1 were disclosed in D2, then it would lack inventive step by virtue of being anticipated. Noting that D2 does not disclose all the features of claim 1, I considered it under the ground of inventive step.
[58] Opponent’s written submissions at [100]
Lack of an inventive step in light of D7 when combined with the CGK
D7 was, effectively, a prior use of a helical flight forming machine that Mr Coats stated was sold by Piletech. As stated by Mr Coats:
“… the Piletech machine was in the public domain in 2002. Although a very rudimentary example designed for very simple low pitch helix forming, this pull-forming machine exhibits lateral and rotational movement to allow forming of true helices.”[59]
[59] Coats 1 at [35]
A video showing D7 in operation and a series of stills from the video were in evidence. Below are two stills that represent, in my opinion, the starting and finishing positions of the machine’s operation:
Clearly, the part labelled as the “First support head” has moved upwards along an axis and, as evidenced by the lack of gap between the edges of the first and second support heads, has rotated about the axis.
The opponent referred to a schematic plan view of D7 that was in Mr Smair’s evidence:
[60]
The opponent submitted that, as indicated by the arrows, a lateral position adjustment had occurred with respect to the main axis during formation of the helical flight.
[60] Smair at [95]
The applicant submitted that the opponent had not established that D7 had been publicly used before the priority date. Regardless of that point, the applicant noted that, since the second/lower support was fixed, D7 did not disclose “first and second supports configured to provide for a plurality of position adjustments including a lateral position adjustment”[61] as required by the claim. They also submitted that, given that only rotation of support heads occurred, clearly, there is no lateral movement of support heads in the direction of lateral axes which extend laterally with respect to a main axis along which the support heads are displaced.
[61] Applicant’s written submissions at [159]
Putting aside whether D7 was a public prior use, as with D1 and D2, and for the same reasons, the opponent has not made out its case for D7. The rotation of a support head of D7 cannot also be considered to be the straight-line movement along a lateral axis required by the claim. As with D1, while a straight line could be drawn between the starting and finishing positions of a support head, in D7 the movement of that support head has not been constrained to being one along a straight line. Moreover, as noted for D1 and D2, there is no evidence as to how the PSA would go about modifying the apparatus of D2 to incorporate lateral movement of the support heads along a straight line during formation of the helical flight, or what would motivate them to do so.
I cannot find that the claims lack an inventive step in light of D7.
In conclusion, on the evidence before me, the claims do not lack an inventive step.
Subsection 40(3)
The opponent opposed the application on the basis that the claims lacked clarity and were not supported by the matter disclosed in the complete specification.
Clarity
It is a requirement of subsection 40(3) of the Act that the claims be clear. This requirement is satisfied if a person could ascertain “whether or not what he proposes to do falls within the ambit of the claim”.[62] If a person reading the claims is able to give workable meaning to the claims, then the claims are clear. However, the terms used in claims need not be precise and absolute, as set out in Flexible Steel Lacing Company v Beltreco Ltd:
“Lack of precise definition in claims is not fatal to their validity, so long as they provide a workable standard suitable to the intended use. The consideration is whether, on any reasonable view, the claim has meaning. In determining this, the expressions in question must be understood in a practical, commonsense manner. Absurd constructions should be avoided and mere technicalities should not defeat the grant of protection.” [63]
[62] Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59 at 60.
[63] Flexible Steel Lacing Company v Beltreco Ltd [2000] FCA 890; (2001) 49 IPR 331 at [81] (cited with approval in Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag [2008] FCAFC 121; (2008) 77 IPR 229) (citations omitted).
I also note that, if a term is unclear, it is permissible to refer to the description for clarification if a term is in need of interpretation[64].
[64] Decor at [25]
Both parties relied upon their written submissions for this ground. Verbatim, the opponent’s submissions on clarity were as follows:
“The comma after the word ‘being’ in line 7 of claim 1 makes the paragraph it is part of grammatically incorrect. In order for that paragraph to make sense, it has to be read as if the comma were not there.
Claim 5 defines the first support head comprising a holder operatively mounted to the main body so as to be movable in a direction of its associated lateral axis. The complete specification states that each of the holder components is at least partially rotatable about a longitudinal pivot axis P-P (page 12, para [0063]) but it is unclear how the holder can move in a direction of an associated lateral axis or what that axis is. It is also unclear whether ‘its associated lateral axis’ referred to in claim 5 is that of the holder or that of the main body.
Claim 6 refers to the holder comprising a plurality of holder components mounted so as to be independently pivotable relative to one another about a pivot axis which extends parallel with ‘the lateral axis’. There is no antecedent basis for ‘the lateral axis’. It is not clear what axis the lateral axis is referring to, and whether this is intended to be the same axis as ‘its associated lateral axis’ referred to in claim 5.
Similarly, it is not clear what axis ‘the lateral axis’ is referring to in claims 7, 8, and 9 and whether this is intended to be the same axis as ‘its associated lateral axis’ referred to in claim 5.
It is unclear what ‘free movement’ means, as referred to in claims 12 and 13. The complete specification refers to this term on page 4, para [0014] only, and does not describe what it is.
It is unclear what ‘interference’ means in claim 18 and what function this serves. The complete specification refers to this term on page 4, para [0011] and on page 13, para [0065], and does not describe what it is.
It is unclear what features comprise the ‘compensating arrangement’ referred to in claim 19. The term does not appear in the complete specification. The complete specification contains the term ‘an arrangement for compensating’ at page 4, para [0011] but does not describe what it is.”[65]
[65] Opponent’s written submissions at [164]–[170]
I cannot see any clarity issues arising from the opponent’s items. Indeed, I note that no expert seemed to have any trouble understanding the claims.
On the issue of the comma after “being” in claim 1, the opponent’s submissions contain the correct solution; the comma is clearly superfluous and should be ignored.
Regarding the issue of “associated lateral axis” in claim 5, given its dependency upon claim 4, it seems immediately apparent to me that claim 5 is defining that the holder is mounted to the main body which, in turn, is mounted to the first support head which, as per claim 1 moves on a respective lateral axis. That is, claim 5 is defining that the holder is displaceable in the direction of the lateral axis associated with the support head it is mounted on.
For claim 6, while, at first glance, the antecedent for “the lateral axis” is not perfectly clear, this is only because previous claims did not use the exact words “a [or the] lateral axis”. However, the standard for clarity is not one of perfection. It is one of a workable standard for the reader. In this case, it is reasonably clear that the lateral axis being referred to is the same as that referred to claims 4 and 5; the lateral axis that the associated support head can move along. For the same reasons, there is no lack of clarity for claims 7, 8, and 9.
On the issue of “free movement” in claims 12 and 13, I think the opponent is seeing clarity issues where none exist. The term is clear on its face. The claims define that the movement of the support heads, either laterally or rotationally, is “free movement absent a drive”. There is no doubt that this means that, if the support heads are not moved by a motor (i.e. a drive), then their movement occurs freely. I also note that, when discussing whether D1 contained the features of claim 13, Mr Coats stated:
“The support heads/mounting plates 25, 27 can freely rotate by virtue of being rotatably connected to the pairings 26, 28.”[66] (my bolding)
Clearly, Mr Coats knew what was meant by “free movement”.
[66] Coats 1 at [54]
Regarding “interference” in claim 18, the description of the application refers to the holder having a gap into which the edge of the blank is inserted and held. The description states:
“The arrangement is such that it allows uniform rotation of the side edge of the blank so that interference occurs.”[67]
Given that the holder acts to clamp the inserted blank edge, clearly “interference” is referring to the action of clamping so as to locate the edge in place. There is no lack of clarity.
[67] Description at [0065]
As to the purported lack of clarity of “compensating arrangement” in claim 19, I am at a loss as to how this could be considered to be unclear. The claim itself provides the explanation. That is, the “compensating arrangement” is for “compensating for a calculated spring back effect resulting from elasticity or resilience of the blank from which the helical screw flight is formed.” I fail to see how this could be misunderstood.
The claims do not lack clarity.
Support
Subsection 40(3) as amended by the Raising the Bar Act requires that the claims must be supported by matter disclosed in the specification. The requirement of support can be summarised as requiring that the scope of the claims “should correspond to the technical contribution to the art”.[68] In Merck Sharp & Dohme Corporation v Wyeth LLC (No 3)[69] Burley J confirmed that the summary provided by Aldous J in Schering Biotech Corp’s Application, and often followed in the United Kingdom, encapsulates broadly the approach in Australia:
“…to decide whether the claims are supported by the description it is necessary to ascertain what is the invention which is specified in the claims and then compare that with the invention which has been described in the specification. Thereafter the court’s task is to decide whether the invention in the claims is supported by the description. I do not believe that the mere mention in the specification of features appearing in the claim will necessarily be a sufficient support. The word ‘support’ means more than that and requires the description to be the base which can fairly entitle the patentee to a monopoly of the width claimed.”[70]
[68] Fuel Oils/EXXON (T 409/91) [1994] OJ EPO 653 at 659 (‘Exxon’)
[69] [2020] FCA 1477 at [546] (“Merck”)
[70] [1993] RPC 249 at 252-253
In CSR Building Products Limited v United States Gypsum Company[71] the delegate summarised the approach to determining whether the requirements of support are satisfied as follows, which remains relevant in view of subsequent Federal Court decisions:[72]
(i)construe the claims to determine the scope of the invention as claimed,
(ii)construe the description to determine the technical contribution to the art, and
(iii)decide whether the claims are supported by the technical contribution to the art.
Claims will exceed the technical contribution to the art when they claim products that the specification does not enable[73] or cover ways of achieving the desired result which owe nothing to the application, or any principle disclosed therein.[74]
[71] [2015] APO 72 at [115]
[72] See, e.g., Merck at [546]-[547], Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd [2022] FCA 540 at [481] (“Jusand”)
[73] Merck at [553], TCT Group Pty Ltd v Polaris IP Pty Ltd [2022] FCA 1493 at [243]-[244]
[74] Jusand at [483]
Both parties relied upon their written submissions for this ground. Verbatim, the opponent’s submissions on support were as follows:
“Claim 1 is not supported by the matter disclosed in the specification. Claim 1 defines the first and second support heads being configured so as to provide for a plurality of position adjustments including a lateral position adjustment and a rotational position adjustment. The specification fails to provide a clear and complete disclosure of what the claimed position adjustments are in addition to the lateral and rotational adjustments referred to in claim 1.
Claim 1 defines ‘at least one of the first and second support heads can be rotated about a rotation axis which extends in a direction generally parallel to or coaxial with the main axis during formation of the helical flight’. The language of the claim suggests that the other head may also be thus rotated because it does not state ‘one of the first and second support heads …’ However the complete specification does not describe any embodiment where the first support head can be rotated.
Claim 19 is not supported by the matter disclosed in the specification. Claim 19 defines an apparatus comprising ‘a compensating arrangement’. The term does not appear in the complete specification. The complete specification does not describe the features of that arrangement.”[75] (underlining in original)
[75] Opponent’s written submissions at [172]-[174]
As with clarity, there is nothing in the opponent’s submissions that provide a basis for a finding that certain claims are not supported.
As to the use of “including” in claim 1, I note that the description states, when discussing the preferred embodiment:
“It will be appreciated from the foregoing that the mounting of the two support heads is such so as to provide for a series of position adjustments which enable the natural or true shape of the flight to be substantially maintained during the formation process. The first support head has three position adjustments or degrees of freedom. The first is the axial displacement of the body portion. The second and third are the axial displacement of the holders and the independent rotation of the holder elements. The second support head has four position adjustments. The first is the rotation of the support head about an axis which is coaxial or parallel with the main axis. The second is the axial displacement of the body portion and the third and fourth are axial displacement of the holder elements and independent rotation of those elements.”[76]
Clearly, it is incorrect for the opponent to state that there has been no disclosure of position adjustments in addition to the lateral and rotational adjustments. I do not see the claim as exceeding the technical contribution to the art.
[76] Description at [0096]
As to the rotation of the first support head, I note the applicant’s submission that:
“the Opponent’s position is clearly unsustainable, noting that paragraph 7 of the specification states: ‘In certain embodiments the first and second support heads can be mounted for axial movement and may also be mounted so that one or both are rotatable.’”[77] (italics in original)
[77] Applicant’s written submissions at [87]
While I recognise that the opponent’s submission was that “the complete specification does not describe any embodiment where the first support head can be rotated”, the applicant’s point remains. The specification contemplates both support heads being rotatable. I accept that there is no embodiment with both support heads capable of rotation, but there is no evidence to suggest that the claim covers ways of achieving rotation of the first support head which owe nothing to the application, or any principle it discloses. The opponent has not made out its case.
Finally, with respect to the breadth of “compensating arrangement”, I accept that these words (in this order) do not appear in the description. However, it seems to me to be a very narrow view of support to require identicality of wording between description and claims. With respect to this feature, I note that the description states at various places:
“As the first support member is drawn in the direction of axis X-X, the second support member corresponds to the natural forming rotation of the flight and rotates about axis M-M. The flight forms to the natural helix path. The first support member is extended to a predetermined length, which incorporates a calculated offset length due to the springback (elastic deformation) in the flight.
In certain embodiments, a similar technique can be employed by forming the flight to a predetermined length and then moving an additional calculated distance or coverage to compensate for the natural springback (elastic deformation) of the material. As this point the flight may be released and the springback accurately measured. The flight may be re-formed to include this updated springback (elastic deformation). This process may be repeated until the predetermined flight pitch is accurately achieved.”[78] (my bolding)
“During formation of the flight the blank is drawn or pulled in the direction of the axis X-X beyond the point at which the required helix profile is achieved. This is shown in figures 3 and 7. This can take into account spring back which is a result of elastic deformation properties of the material from which the flight is being formed. When the pulling motion of the drive ceases the arrangement can be such that the profile is caused to spring back to the desired helix profile by disconnection of the support head 20 from its associated drive.”[79] (my bolding)
“… the main axis drive motor is extended to the desired position which can be below, exact or above the required calculated helical points. The calculated helical points are based on the dimension of the required helix. The main axis drive motor is then disengaged and the helix is free to naturally spring back across all axes. The positions of any or all of the axes at which the helix has sprung back to is measured by the apparatus or machine. These points are referred to as the measured spring back points. Measurement can be any means whether electronically or mechanically, such as motor encoders, linear encoders, proximity sensors, laser measurement tools, or mechanical measurement tools. The difference between the measured spring back points and the calculated helical points is taken as an adjustment factor. The main axis motor is then extended with the additional adjustment factor. The main axis motor is then disengaged and the helix is allowed to spring back to the correct position. In certain embodiments the adjustment step can be repeatable.”[80] (my bolding)
[78] Description at [0019]–[0020]
[79] Ibid at [0071]
[80] Ibid at [0091]
Clearly, the compensating arrangement has the features of drawing the support heads apart to a distance that is more than the desired pitch of the helix to allow the natural elasticity of the material forming the flight to spring back. It is true that there is no specific embodiment of how to calculate this additional drawing distance. However, the principle of general application is clear, and I note that no expert mentioned any problem when applying that principle over the scope of the claim. It was a non-issue.
The claims do not lack support.
In conclusion, it follows that the opponent’s case under subsection 40(3) has not been made out.
Conclusion
The opponent has not discharged their onus. The opposition is unsuccessful. Subject to appeal, I will direct that the application proceed to grant.
Costs
It is usual in matters before the Commissioner that costs should follow the event and I see no reason to depart from this approach. The opponent has been unsuccessful in this matter, and, therefore, I will award costs according to Schedule 8 against the opponent.
Greg Powell
Delegate of the Commissioner of Patents
Annex
1. An apparatus for use in the formation of a helical screw flight from a blank having an outer peripheral edge, a central hole having an inner peripheral edge, and a split extending from the outer peripheral edge to the inner peripheral edge of the blank so as to provide for opposed side edge sections the apparatus comprising:
a drive
first and second support heads configured to hold the blank at the opposed side edge sections, the support heads being, arranged for relative axial movement with respect to one another during formation of the helical flight in a direction of a main axis from a preforming position towards a formed position in response to actuation of the drive
the first and second support heads being configured so as to be able to provide for a plurality of position adjustments including a lateral position adjustment whereby the first and second support heads can be displaced or moved laterally with respect to the main axis in a direction of respective lateral axes during formation of the helical flight and a rotational position adjustment wherein at least one of the first and second support heads can be rotated about a rotation axis which extends in a direction generally parallel to or coaxial with the main axis during formation of the helical flight.
2. The apparatus according to claim 1, wherein the first support head is operatively connected to the drive so as to be movable in the direction of the main axis in response to actuation of the drive and the second support head is operatively mounted so that axial movement in the direction of the main axis is inhibited.
3. The apparatus according to claim 1 or 2, wherein the drive comprises a linear actuator.
4. The apparatus according to any one of claims 1 to 3, wherein the first support head comprises a main body mounted so as to be movable in a direction of its associated lateral axis.
5. The apparatus according to claim 4, wherein the first support head comprises a holder operatively mounted to the main body so as to be movable in a direction of its associated lateral axis.
6. The apparatus according to claim 4 or 5, wherein the first support head comprises a holder operatively mounted to the main body, the holder comprising a plurality of holder components mounted so as to be independently pivotable relative to one another about a pivot axis which extends parallel with the lateral axis.
7. The apparatus according to any one of claims 1 to 6, wherein the second support head comprises a main body mounted so as to be movable in the direction of the lateral axis.
8. The apparatus according to claim 7, wherein the second support head comprises a holder operatively mounted to the main body so as to be movable in a direction of the lateral axis.
9. The apparatus according to claim 8, wherein the second support head comprises a holder operatively connected to the main body, the holder comprising a plurality of holder components mounted so as to be independently pivotable relative to one another about a pivot axis which extends parallel to the lateral axis.
10. he apparatus according to claim 4 or 7, wherein the main body of one or both of the first and the second support heads is mounted for rotation about the rotation axis.
11. The apparatus according to any one of claims 1 to 9, including a main structure, the drive and first and second support members being operatively mounted to the main structure.
12. The apparatus according to any one of claims 1 to 11, wherein the lateral movement of the first and second support heads in the direction of the lateral axes is free movement absent of a drive.
13. The apparatus according to claim 12, wherein the rotation of one or both of the support heads about the rotation axis is free movement absent of a drive.
14. The apparatus according to any one of claims 1 to 11, wherein the lateral movement of the first and second support heads in the direction of the lateral axes is driven movement effected by a drive.
15. The apparatus according to claim 14, wherein the rotation of one or both of the support heads about the rotation axis is driven movement effected by a drive.
16. The apparatus according to claim 14 or 15, wherein each driven movement is effected by a separate or different drive.
17. The apparatus according to claim 4, wherein the first support head comprises a holder operatively mounted to the main body of the first support head the holder comprising an elongated body having opposed ends, a slot extending from one end towards and terminating short of the other end, the slot comprising opposed V-shaped sides terminating at spaced apart inner edges so as to provide for a gap or bight therebetween, the arrangement being such that it allows for uniform rotation of the side edge section of the blank so that interference occurs.
18. The apparatus according to claim 7, wherein the second support head comprises a holder operatively mounted to the main body of the second support head the holder comprising an elongated body having opposed ends, a slot extending from one end towards and terminating short of the other end, the slot comprising opposed V-shaped sides terminating at spaced apart inner edges so as to provide for a gap or bight therebetween, the arrangement being such that it allows for uniform rotation of the side edge section of the blank so that interference occurs.
19. The apparatus according to any one of claims 1 to 18, comprising a compensating arrangement for compensating for a calculated spring back effect resulting from elasticity or resilience of the blank from which the helical screw flight is formed.
20. The apparatus according to any one of claims 1 to 19, wherein the support heads are disposed adjacent one another when in the preforming position.
21. The apparatus according to any one of claims 1 to 20, including a control system that controls the relative movement of the support heads away from one another in the direction of the main axis from the preforming position during formation of the helical flight.
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