Imdex Limited v Globaltech Corporation Pty Ltd and Longyear TM, Inc
[2023] APO 58
•14 November 2023
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Imdex Limited v Globaltech Corporation Pty Ltd and Longyear TM, Inc. [2023] APO 58
Patent Application: 2019257536
Title:Core barrel head assembly with an integrated sample orientation tool and system for using same
Patent Applicants: Globaltech Corporation Pty Ltd and Longyear TM, Inc.
Opponent: Imdex Limited
Delegate: Dr W.E. Guinea
Decision Date: 14 November 2023
Hearing Date: 28 April 2023, by videoconference
Catchwords: PATENTS – s59 – inventive step – no claims lack inventive step – support – no claims lack support – opposition unsuccessful – costs awarded against opponent
Representation: Counsel for the Applicant: Andrew Fox SC
Also appearing for the Applicant: Nicholas Lakatos of FPA Patent Attorneys Pty Ltd
Counsel for the Opponent: Megan Evetts
Patent attorney for the Opponent: Stuart Campbell of FB Rice Pty Ltd
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2019257536
Title:Core barrel head assembly with an integrated sample orientation tool and system for using same
Patent Applicant: Globaltech Corporation Pty Ltd and Longyear TM, Inc.
Date of Decision: 14 November 2023
DECISION
The opposition under s59 of the Patents Act 1990 is unsuccessful.
I award costs against the Opponent, Imdex Limited, according to Schedule 8 of the Regulations.
REASONS FOR DECISION
Background
Patent application 2019257536 (the “application”) was filed on 1 November 2019 in the name of Globaltech Corporation Pty Ltd and Longyear TM, Inc. (the “Applicants”). The application was advertised as accepted on 1 April 2021 and by virtue of its divisional status to 2015249889 has an earliest priority date of 21 April 2014.
On 30 June 2021, Imdex Limited (the “Opponent”) filed notice of opposition to the application under s59 of the Act (the “opposition”).
The statement of grounds and particulars for the s59 opposition was filed on 30 September 2021 (the “SGP”).
The filing of evidence in support (“EIS”) was completed on 24 December 2021. This consisted of:
· a first declaration by Mr James Barry Reilly (“Reilly1”), dated 22 December 2021, with supporting exhibits JBR-01 to JBR-05;
· a first declaration by Mr Ray Christopher Brown (“Brown1”), dated 3 December 2021, with supporting exhibits RCB-01 to RCB-08; and
· a second declaration by Mr Ray Christopher Brown (“Brown2”), dated 22 December 2021, with supporting exhibits RCB-01 to RCB-03. To avoid confusion with the exhibits to Brown1, I will refer to these exhibits as RCB2-01 to RCB2-03.
The filing of evidence in answer (“EIA”) was completed on 20 April 2022. This consisted of:
· a declaration by Professor Christian Dupuis (“Dupuis”), dated 18 April 2022, with supporting annexures JCD-1 to JCD-9; and
· a declaration by Mr Christopher L. Drenth (“Drenth”), dated 19 April 2022.
The filing of evidence in reply (“EIR”) was completed on 22 June 2022. This consisted of:
· a second declaration by Mr James Barry Reilly (“Reilly2”) dated 16 June 2022, with supporting exhibit JBR-06.
Amendments to the specification were requested on 22 December 2021. These were opposed by the Opponent under s104 of the Act, however this opposition was withdrawn on 1 September 2022. This meant that the amendments were incorporated into the specification on 9 December 2022. References to the specification from hereon are to the specification as presently amended.
A hearing for this matter was set for 28 April 2023. The Opponent’s written submissions (the “Opponent’s written submissions”) were filed on 14 April 2023. The Applicant’s written submissions (the “Applicant’s written submissions”) were filed on 24 April 2023.
The Invention as Described
The invention for this application concerns a core orientation device used in determining the orientation of samples of earth (“cores”) extracted during survey drilling operations. Such cores are extracted to gain an understanding of the geologic properties of the surrounding earth formation, which in turn comprises useful information for making decisions about such things as resource extraction. To gain useful information, it is important to establish the orientation of the core as it was in the surrounding formation prior to its extraction.
10. The specification discusses a number of prior art approaches for determining core orientation, as well as some difficulties with these. To help illuminate the prior art, the problems thereof and the nature of the invention as disclosed, it is useful to digress into some details concerning core extraction and orientation as apparent from the specification alone. I may further consider the features discussed below in connection with a discussion of the common general knowledge (“CGK”) later in this decision.
11. Cores are extracted using a drill string, typically comprising a series of cylindrical outer tubes, which terminate in a cutting head which is rotated to cut the core from the surrounding medium. Concentrically inside the drill string is a cylindrical core barrel head assembly, which comprises, amongst other components, a hollow end portion that receives the core as it is being cut from the surrounding formation by the drill string. Once drilling of the core is completed, the core is “broken” from the surrounding medium and a wireline attached to the core barrel head assembly is used to retrieve the core barrel head assembly, now containing the core, back to the surface.
12. Commonly, the drill process proceeds at an angle to the vertical, meaning that gravity can be used to identify the “bottom” of the core and thus the orientation of the core in the surrounding medium. A known method of core orientation makes use of this by attaching a marker, for example a crayon, to a wireline. The marker is lowered into the drill hole prior to introduction of the core barrel head assembly so as to place a mark on the gravitationally lowest side of the material that will form the core. The mark thus provides an indication of the core orientation once extracted to the surface.
13. Other prior art orientation methods are discussed at [0006] and [0007] of the specification:
“Other conventional technologies use core orientation units attached to core inner tubes and back-end assemblies to determine the correct orientation of the drilled out core sample after a preferred predetermined drilling distance intervals during drilling. These core orientation units typically measure rotational direction of the core sample before extraction. On retrieval at the surface of the hole, the rotational direction can be determined by electronic means and the upper or lower side of the core material physically ‘marked’ for later identification by geologists.
Coupled with the core orientation system, a survey instrument is conventionally used. In this technique, at periodic depths, the survey instrument is lowered down the drill hole to determine azimuth (angular measurement relative to a reference point or direction), dip (or inclination) and any other required survey parameters. These periodic depth survey readings are used to approximate the drill path at different depths. Together with the rotational position of the extracted core (from the core orientation device), the three dimensional subsurface material content map can be determined.”
14. It is then stated at [0008] of the application that:
“It has been found desirable to provide an improved core barrel assembly having an integrated sample orientation subassembly and method for using same that is configured for use in a core sample down hole surveying and sample orientation that minimizes the need to add additional drill string elements, which allows for increased efficiency and speed of drilling.”
15. The object of the invention is then given at [0008a] as follows:
“It is an object of the present invention to substantially overcome or at least ameliorate one or more of the above disadvantages, or to provide a useful alternative.”
16. After the above background sections discussed above there follows a “Summary” of the invention spanning [0008b] to [0015]. There are consistory statements, at [0008b] to [0008z] which, as is typical in patent specifications, more or less simply repeat the subject matter of the claims. Paragraphs [0009] to [0015] comprise some further consistory statements, covering much the same territory as [0008b] to [0008z]. It is worthwhile noting, from the consistory statements, the fact that the electronic orientation device is contained within a sealed cavity of some kind within the core barrel head assembly, the core barrel head assembly can have wireless communication means to transmit or receive orientation data and the core barrel head assembly is arranged to be connected to tube portions of a drill string.
17. Some methods of obtaining core orientation are discussed at [0013] and [0014], however these are quite general in nature and need not be discussed in detail here.
18. Paragraphs [0012] and [0015] outline stated advantages of the invention:
“[0012] The at least one electronic instrument of the core barrel head assembly advantageously enables obtaining drill hole survey readings without the need to insert unwieldy extension drill rods and/or a survey probe to measure azimuth and inclination/dip of the drill hole path. This results in a reduction of equipment handling and usage of equipment, a reduction of operations by not needing to periodically withdraw the drill bit a certain distance in order to advance a survey probe ahead of, and therefore distanced from, the drill bit, with a resultant increase in operational efficiency.”
“[0015] Advantages are that there is more time available for drilling due to less time required for surveying and manipulating additional pieces of equipment and mechanical extensions during the survey process.”
19.
The nature of the invention described is best understood by reference to the figures. A first aspect/embodiment of the invention is illustrated via figures 1 to 7. Figures 1 and 2, which are reproduced below, show a drill string 10 including a core barrel head assembly 30, comprising an elongate tube body 60, coupled to a conventional head assembly 20 (I note that figure 3, discussed further below, comprises an enlarged section of figure 2 demonstrating the connection between the core barrel head assembly 30 and the conventional head assembly 20).
20. A stated advantage of having the core barrel head assembly 30 coupled as indicated to a conventional wire line head assembly is given at [0044]:
“As shown in Figures 1 and 5-6, the core barrel head assembly 30 has an elongate tube body 60 that is conventionally joined to a conventional wire line retrieval portion of a head assembly 10. Thus, the head assembly of the drill string is complete without the necessity for the use of an unwieldy extension tube as required in the prior art designs.” (Note the use of reference numeral 10 here appears to be an error – it seems 20 should have been used)
21.
As can be seen from figures 2 to 6, reproduced below, the core barrel head assembly 30 comprises, amongst other things, an exterior surface 61 of the elongate tube body 60, a distal end 32 that is closer to the drill bit end of the drill string (i.e. closer to the end of the drill hole), a proximal end 34 that is opposed to the distal end 32 (i.e. the part of the core barrel head assembly furthest up the drill hole), a first interior cavity 64 and a second interior cavity 70 having a closed proximal end 72.
22. An electronic instrument 40, arranged to obtain core orientation data, a power source 50, for example a battery, for the electronic instrument 40 and a wireless communication means are hermetically sealed within second interior cavity 70, using means discussed further below. I note there that the specification indicates that the second interior cavity may be sized to only include one of the electronic instrument 40, power source 50 and the communication means or is sized so as to incorporate the electronic instrument 40 and the power source 50.
23. As apparent from figure 5, the core barrel head assembly 30 comprises a threaded proximal end 62 that allows for coupling, in a known manner, to a conventional head assembly 20, as shown on figures 1 and 2. Such conventional head assemblies 20 comprise a wire line for retrieval from the drill hole. The effect of joining the core barrel head assembly 30 to a conventional head assembly 20 is stated at [0044] as follows: “Thus, the head assembly of the drill string is complete without the necessity for the use of an unwieldy extension tube as required in the prior art designs.”
24. The second interior cavity 70 may also comprise an orientation indicator module 80 that includes a plurality of light emitters 88. The light emitters 88, for example LEDs, may lie beneath windows 74 in the second interior chamber 70, such that they may indicate the orientation of the core using light (the windows 74 may also facilitate wireless transmission of data to/from the core barrel head assembly 30 and a remote device). For example the light emitters 88 may illuminate green or red to indicate the direction the core should be rotated to obtain the correct orientation for marking, and then flash when the correct orientation is reached. The orientation indicator module 80 can comprise seals, such as O ring 84 to prevent ingress of fluid into the second interior cavity 70 (i.e. to effect hermetic sealing of the proximal end of the second interior cavity 70), for example through the windows 74.
25. The effect of using the windows 74 and light emitters 88 are stated as follows at [0051]:
“Thus, advantageously, when the core barrel head assembly 30 and the core sample are recovered from down the hole, the core barrel head assembly 30 need not be separated from the drill string in order to determine a required orientation of the core sample.”
26. Hermetic sealing of the distal end of the second interior cavity 70 is affected by receiving seal coupler 90 via internal threads on the open distal end 73 of elongate tube 60. An O ring seal 95 may be mounted on seal coupler 90 to assist in sealing the second interior cavity 70. Hermetic sealing may also be further affected via a check valve assembly 100, which provides fluid control for wire line operation, and is connected to male threads provided on the exterior of open distal end 73 of elongate body 60 via female threads on the proximal end assembly 102 of check valve assembly 100. The check valve assembly 100 further pushes against seal coupler 90 and electronic instrument 40 to affect a hermetic seal, as does the orientation indicator module 80 against electronic instrument 40 at the proximal end 72 of the second interior cavity 70.
27. Turning to the electronic instrument 40, more detail about this is provided on figures 9 and 10, which are reproduced below. From these figures it can be seen that the electronic instrument 40 comprises an LCD display 41 (which can allow for setting up of the electronic instrument 40 before deployment), vibration sensors 42, an accelerometer 43, memory 45, timer 47 and LEDs 88 (discussed above). It may also comprise one or more further sensors, such as a gravitometer, magnetometer, inclinometer, gyro, and direction measuring sensors. Other, unnumbered features are apparent from figure 10, however the nature of these as standard components of a computerised device are apparent, such as the CPU and ADC. Figure 10 also illustrates some of the process flow paths for determining core orientation.
28. The electronic instrument 40 records data indicative of the core orientation in the surrounding medium, which allow for the actual core orientation to be determined. Such data includes gravitational and/or magnetic field strengths and their directions. Other data can include relevant angular values for the drill string, such as the azimuth or dip angle (angle of inner core tube with respect to the horizontal). The LCD screen 41 may provide instructions to an operator to rotate the core tube until this reflects the proper core orientation, or this may be provided via LEDs 88 as discussed above. I understand that audible means of indicating the correct orientation are also contemplated. Once the proper orientation is determined, the operator may appropriately mark the core so that it may be kept for further analysis.
29. Alternatively, for the situation where visual or audible means may be insufficient to indicate core orientation, the exterior surface 61 may comprise angular degree marks to assist in obtaining the correct core orientation. When the core is retrieved to the surface, the communication means of the core barrel assembly 30 can communicate with handheld device 400 (discussed further below). In this way core orientation data can be transmitted to the handheld device specifying the desired angular rotation of the core barrel head assembly to obtain the correct orientation. The handheld device 400 and angular markings can thus be used to correctly orientate the core for marking.
30. I will discuss further details regarding how the electronic instrument 40 allows for the determination of core orientation later in this decision.
31. Further, largely self-explanatory, features of the core barrel head assembly 30 include:
· base portion 65 of first interior cavity 64;
· a port 66 in fluidic communication with first interior cavity 64, optionally via a grease fitting 68;
· female planar stops 67, 69 for aiding in the grasping and orientating the core barrel head assembly 30; and
· various components of the check valve assembly 100, including:
o distal end 104;
o interior chamber 110;
o at least one port 106 in fluid communication with the interior chamber 110;
o distally tapered seat 112 of interior chamber 110; and
o ball 120 that selectively blocks the distally tapered seat 112.
32. Although not shown on the figures it is apparent from these, and from [0084] of the specification, that the distal end of the core barrel head assembly 30 is connected to further components of the inner tube assembly of the drill string, particularly the sample tube for receiving a core.
33. Further stated advantages of the first embodiment are given as follows:
“[0073] Optionally, it is contemplated that the least one electronic instrument 40, which is configured to obtain orientation data, the power source 50 and the communication means to receive and/or transmit orientation data can be sized and shaped to be integrally mounted therein conventional wire line assemblies. It (sic) this aspect, the least one electronic instrument 40 that is configured to obtain orientation data, the power source 50 and the communication means to receive and/or transmit orientation data can be miniaturized and/or flexible to be received within defined cavities therein the conventional wire line assemblies and can be subsequently hermetically sealed, such as with, for example and without limitation, an epoxy, therein the defined cavities.
[0074] One skilled in the art will appreciate that the core barrel head assembly 30 does not need to be separated from the head assembly 20 in order to determine core sample orientation and/or to gather data recorded by the tool means that there is less risk of equipment failure and drilling downtime, as well as reduced equipment handling time through not having to separate the sections in order to otherwise obtain core sample orientation. Known systems require an end-on interrogation of the tool. By providing a sealed apparatus and the facility to determine orientation of the core sample by observing the orientation indications through one or more windows 74 in the side of the elongate tube body 60, reliability and efficiency of core sample collection and orientating is improved. Consequently operational personnel risk injury, as well as additional downtime of the drilling operation. Without having to separate core barrel head assembly 30 from the head assembly, the orientation of the core sample can be determined and the gathered information retrieved with less drilling delay and risk of equipment damage/failure.
[0075] Further, unlike known systems, the core barrel head assembly 30 provides for the desired flow of pressurized fluid in the wire-line assemblies to conventionally operate the fluid control vales that are commonly used in wire-line operations. As noted, the check valve assembly 100 allows for the selectively passage of fluid therethrough that assembly and to the exterior surface of the core barrel head assembly 30 and subsequently through the pressure relief valve to exit out of the first interior cavity of the elongate tube body.”
34. A second embodiment of the invention is illustrated in figure 8, which is reproduced below. This illustrates an alternate core barrel head assembly 130 coupled using known methods to a conventional wireline retrieval portion of a head assembly 10. I note that the conventional wireline retrieval portion 10 appears to be functionally equivalent to conventional head assembly 20 of the first embodiment, rather than the entire drill string 10 of the same.
35. A stated advantage of coupling the core barrel head assembly 130 to a conventional wireline retrieval portion of a head assembly 10 as per the second embodiment is given at [0060] of the specification:
“As shown in Figure 8, the core barrel head assembly 130 is conventionally joined to a conventional wire line retrieval portion of a head assembly 10. Thus, the head assembly of the drill string is complete without the necessity for the use of an unwieldy extension tube as required in the prior art designs.”
36. Core barrel head assembly 130 has a distal end 132 (i.e. positioned closer to the drill bit of the drill string) and a proximal end 134 (i.e. positioned furthest away from the drill bit and adjacent to conventional wireline retrieval portion 10).
37. Functionally, the core barrel head assembly 130 is comprised of a tubular elongate body 160, elongate hollow spindle 170 and check valve assembly 180 for fluidic control of wireline operations. Elongate hollow spindle 170 is rotatably mounted within tubular elongate body 160 via bushing 192 and cylindrical bearing 190. The bushing 192 is placed on internal bushing mount 163 near the threaded distal end 162 of the tubular elongate body 160, whilst cylindrical bearing 190 is mounted on an internal shoulder 165 near the open proximal end 164 of the tubular elongate body 160. A nut 194 is coupled to a threaded portion (not labelled) near the distal end 172 of the hollow spindle 170. Threaded proximal end 173 of the hollow spindle 170 is coupled to threads provided on coupled end assembly 182 of check valve assembly 180.
38. An interior cavity 166 of the tubular elongate body is defined by internal shoulder 165, the exterior surface of the elongate hollow spindle 170 and nut 194. Electronic orientation instrument 40, power source 50 and communication means (not shown) are hermetically sealed in interior cavity 166.
39. Further, largely self-explanatory, features of the core barrel head assembly 130 include:
· Port 167, allowing fluidic communication between the exterior and interior of the tubular elongate body 160;
· Grease fitting 168, to allow selective fluidic flow through port 167; and
· various components of the check valve assembly 180, including:
o interior chamber 185;
o check ball 195;
o distally tapered seat 184, that allows fluidic communication between interior chamber 185 and the interior of the elongate hollow spindle 170 when check ball 195 is positioned away from the distally tapered seat 184; and
o at least one port 186, providing a fluidic path between the exterior of the check valve assembly 180 and the interior chamber 185.
40. Although not shown on figure 8, I understand that the distal end 132 of the core barrel head assembly 130 is connected, via threaded distal end 162 of tubular elongate body 160, to further components of the inner tube assembly of the drill string, particularly the core sample tube for receiving the core, in keeping with [0084] of the specification. Similarly, it would seem that the proximal end 134 of the core barrel head assembly 130 is connected via threads, that can be seen but are unlabelled on figure 8, to conventional wireline retrieval portion 10.
41. As foreshadowed above, and noting the wireless communication means provided in each of the embodiments, the specification contemplates the use of a known handheld device that wirelessly communicates, using for example infrared or radio transmissions, with the core barrel head assembly 30 (i.e. communications means of the electronic instrument 40), as I understand it, via windows 74. Thus the handheld device 400 can receive core orientation data from the electronic instrument 40, but also transmit setup data to the same. It is not entirely clear whether the device is necessarily able to wirelessly communicate with core barrel head assembly 130 (noting the absence of any windows). An exemplary handheld device 400 is illustrated in figure 14, which is reproduced below.
42. Features of the handheld device 400 include display 402, navigation buttons 404, 406 and data accept confirmation button 408.
43. Details and methods of how the electronic instrument 40 is used to determine core orientation follows on from discussion of the devices illustrated in figures 1 to 8. A broad method is outlined at [0086]:
“Another aspect of the present invention provides a method of conducting a down hole survey of drilling, the method including: a) drilling the core from a subsurface body of material; b) recording data relating to orientation of the core to be retrieved, the data recorded using the at least one electronic instrument of the core barrel head assembly, c) separating the core from the subsurface body, and d) obtaining an indication of the orientation of the core based on the recorded core orientation data obtained before the core was separated from the subsurface body.”
44. Somewhat preceding this rather general process are further specific details of the methods used, given at [0080]:
“In one aspect, the at least one electronic instrument 40 of the core barrel head assembly 30 can be configured to not take any orientation measurements while vibrations, such as from the drilling operation, are present. In this aspect, the combination of mechanical, electromechanical and/or electronic sensors and software algorithms programmed into the at least one electronic instrument 40 of the core barrel head assembly 30 can be configured to determine that the core barrel head assembly is in motion while descending down the hole and during drilling and is therefore not yet needed to detect breaking of the core sample from the body of material. Similarly, in a further aspect, it is contemplated that the at least one electronic instrument 40 of the core barrel head assembly 30 can be configured to detect that the core barrel head assembly is ascending to the surface for core retrieval after core breaking and subsequently will not take any core orientation measurements during the ascending operation.”
45. Further aspects of the methods used to obtain core orientation include:
· Taking data after a predetermined deployment time from the surface or after a predetermined delay time;
· Not rotating the drill for a predetermined time delay when ready to break the core, taking orientation and dip measurements during the time delay and instituting a second time delay before further drill after core break;
· Utilising measurements of fluid pressure differentials to determine when the inner tube is nearly full of core material as a proxy for indicating when the core is about to be broken;
· Ceasing drilling once a certain pressure value is obtained and recording data indicative of core orientation;
· Accepting or rejecting core orientation data based on the dip angle being within acceptable limits or using the dip angle as a reference prior to drilling a new hole;
· Recording orientation data periodically during core sampling, such as every few seconds or at randomly generated time intervals, but due to the fact the sensors will shutdown due to vibrations no data will be taken when vibrations are sensed;
· Utilising the final compliant data instead of the first compliant data where orientation data is taken based on detection of no drilling i.e. as determined via vibration measurements;
· Synchronizing the time the core barrel head assembly enters and exits a drill string outer casing with a stopwatch; and
· Asynchronous time operation of the electronic device 40 with respect to the communication device, which is said to simplify obtaining core orientation over existing methods;
46. Some rather more detailed methods of operating the electronic device 40 are provided on figures 11 to 13. Whilst rather more complex in nature, these do not appear to illuminate anything further about the nature of the invention as described or claimed. For completeness, I have included these figures at Annex A to this decision. The figures are largely self-explanatory, except for figure 11, which is reproduced with explanatory text from the specification.
47. Finally, it is worth noting that in keeping with other stated advantages of the invention, paragraph [00117], near the end of the specification, reads as follows:
“Embodiments of the present invention provide the advantage of a fully operating down hole core barrel head assembly without having to disconnect or disassemble any part of the tool/device from the inner tube and/or from the head assembly or any other part of the drilling assembly that the core barrel head assembly would need to be assembled within for its normal operation. Disconnecting or disassembling the core barrel head assembly from the head assembly and/or inner tube risks failure of seals at those connections and/or risks cross threading of the joining thread. Also, because those sections are threaded together with high force, it takes substantial manual force and large equipment to separate the sections. High surrounding pressure in the drill hole means that the connecting seals between sections function to prevent water and dirt from ingressing into and damaging the device.”
The Claims
48. The application comprises 22 claims of which only claim 1 is independent. Claim 1 is reproduced below; the full claim set can be found at Annex B to this decision. For convenience I have also adopted the same integer numbers for claim 1 as per the Applicant’s written submissions, which I understand were also used by the Opponent. Each of the integers of claim 1 are labelled below as per the item in parentheses.
[1.1] A core barrel head assembly having an exterior surface and comprising:
[1.2] a first interior cavity;
[1.3] a sealed interior cavity spaced distally from the first interior cavity and having a closed proximal end;
[1.4] a threaded proximal end portion for coupling to a wire line retrieval portion of a head assembly;
[1.5] a base portion, wherein the first interior cavity extends distally from the threaded proximal end portion to the base portion;
[1.6] a port positioned proximate the base portion and extending from the exterior surface into fluid communication with the first interior cavity;
[1.7] a window that extends from the exterior surface into optical communication with the sealed interior cavity proximate the closed proximal end of the sealed interior cavity;
[1.8] at least one electronic instrument that is configured to obtain orientation data mounted therein the sealed interior cavity,
[1.9] wherein the at least one electronic instrument comprises at least one digital and/or electro-mechanical sensor in a core orientation data recording tool that can be configured to determine a core orientation of a sample core just prior to or after a core break;
[1.10] a power source in operable communication with the at least one electronic instrument, wherein the power source is mounted therein the interior cavity;
[1.11] a transmitter configured to transmit core orientation data;
[1.12] an open and threaded distal end portion, wherein the sealed interior cavity extends distally to the open and threaded distal end portion of the core barrel head assembly; and
[1.13] a check valve assembly configured to affect a hermetical seal of the sealed interior cavity and to provide fluid control for wire line operation,
[1.14] wherein the sealed interior cavity is sized and shaped to hermetically enclose the at least one electronic instrument and the power source.
49. As will be discussed further below, it can be seen that the claims relate to the first embodiment depicted in figures 1 to 7.
The Opposition
50. In the SGP the Opponent pursued grounds under:
· S18(1)(a) – the invention is not for a manner of manufacture within section 6 of the Statute of Monopolies;
· s18(1)(b)(ii) – the invention as claimed does not comprise an inventive step;
· s18(1)(c) – is not useful; and
· s40(3) – the claims are unclear and not supported by matter disclosed in the specification.
51. In its written submissions, the Opponent abandoned the grounds concerning manner of manufacture and utility, and provisionally abandoned clarity grounds depending on any construction advanced by the Applicant. As I understand it, there were no fundamental clarity issues in contention. Accordingly, this decision concerns only those grounds still pressed by the Opponent, namely lack of inventive step and support.
Onus and Standard of Proof
52. The application was filed on 1 November 2019. Consequently, substantive amendments of the Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act2012 apply to the application. This includes the amendment to subsection 60 (3A) that allows the Commissioner to refuse a patent application if satisfied on the balance of probabilities that a ground of opposition exists. Notably it is the Opponent who bears the onus of proving their case to the requisite standard during opposition proceedings.
Who is the Skilled Addressee?
53. The skilled addressee is taken to be a non-inventive worker in the art with respect to the invention concerned, is taken to possess the common general knowledge (“CGK”) in the art, and could be a team of people; see Root Quality Control Pty. Ltd. v Root Control Technologies Pty. Ltd. [2000] FCA 980 at [70] to [71] (“Root Quality Control”); Catnic Components Limited and Another v Hill & Smith Limited (1982) RPC 183 at 242 to 243 and Minnesota Mining & Manufacturing Co. vBeiersdorf (Australia) Ltd. [1980] HCA 9 at [115]; (1980) 144 CLR 253 at 292. In particular in Root Quality Control at [71] Finkelstein J. stated that “... the patent is directed to a person interested in making, constructing, compounding or using the invention...”
54. I consider that the skilled addressee is a person or team of persons involved in the use, designing and construction of core sample drilling and orientation equipment and systems. It is reasonable to believe that the skilled addressee is a composite being comprising those who have an understanding of the electrical, mechanical and control aspects of such equipment and systems. I did not take either party to have significantly different opinions on the nature of the skilled addressee as just elaborated. Whilst the Applicant appears to have couched the skilled addressee in somewhat broader terms, at [29] of its written submissions, I do not see this as making any material difference.
55. I have reviewed the declarations by each of the expert declarants and I am satisfied that each is able to adequately represent the views of the skilled addressee as I have defined it. In this regard I note that:
· Mr Reilly is a mechanical engineer, with a Bachelor’s degree with honours in that field. He has experience in designing gyroscopic and magnetic tools used in the minerals and oil and gas industries, as well as several years’ experience developing new or improved technology to deal with issues pertinent to core orientation (JBR-02). His present role is an Engineering Systems Integration Specialist for IMDEX Technologies Europe (Reilly1 at [2]). Mr Reilly has been associated with the Opponent or related companies via employment since 2011. Mr Reilly has had no meaningful prior involvement with the Applicant (Reilly1 at [4] and [5]).
· Mr Brown is a geologist with a Bachelor’s degree in Geological Engineering. He has significant experience in core logging/surveying, core orientation process solutions, core orientation quality control and extracting information from orientated core samples. Mr Brown presently acts as a consultant geologist via his company Orientated Targeting Solutions LLC (“OTS”) (RCB-02). Mr Brown has been involved with the Opponent via consulting services OTS provided to the Opponent from 2016 to 2020 (Brown1 at [5] to [7]). Mr Brown has no prior association with Globaltech Corporation Pty Ltd, however OTS has provided training to Boart Longyear drillers and given a presentation on core orientation workflow best practices to senior Boart Longyear staff (Brown1 at [8] and [9]). I understand that Longyear TM, Inc, is a subsidiary of Boart Longyear.
· Professor Dupuis has a PhD in Geology, with areas of research including sensors and devices and fossil fuels. He also has Master’s and Bachelor degrees in electrical engineering, covering such things as telecommunications, mechatronics and mine exploration including the use of magnetometers. Professor Dupuis research includes borehole geophysics and developing borehole instruments, mineral exploration and mining engineering (JCD-2). He is presently an associate professor in Geology and Geological Engineering at Université Laval, Quebec, Canada (Dupuis at [13]). Professor Dupuis has some vicarious involvement with both the Opponent and Applicant via their affiliation with a CRC that Professor Dupuis undertook research with from 2010 to 2013 (Dupuis at [11]).
· Mr Drenth has a Bachelor of Science in Mechanical Engineering with honours. He has many years of experience in the engineering aspect of mining, drilling equipment and tooling (Drenth at [5] and [6]). Since 2008 he has led a global engineering team at Boart Longyear focusing on exploration and drilling products; as I understand it, he has been employed by Boart Longyear since 1995 (Drenth at [6]). Mr Drenth is also named as inventor on over 35 Australian patents, including the present application, and has received an award for his patenting prowess (Drenth at [7]). Mr Drenth’s declaration does not discuss any affiliation with any of the parties to this opposition, other than Boart Longyear.
56. At the hearing and in the written submissions there was some disagreement amongst the parties at to which of the expert declarants could better represent the notional skilled addressee. As I indicated above, the skilled addressee is a composite and hypothetical person. One may suggest that the skilled addressee typically does not literally exist in reality but is brought into legal existence to suit the purposes of the Act. Because of this it is rather unsurprising that no one person would generally represent the entire gamut of the skilled addressee’s knowledge and experience. Typically, one declarant or the other may be better positioned to provide evidence on certain aspects of what the skilled would know or do based on their knowledge or experience.
57. I do not propose to make any general statements here about the relative suitability of any of the declarants to represent the skilled addressee; I have already satisfied myself that, as a general proposition, they all are able to provide evidence as to what the skilled addressee would know or do. Suffice to state that where the declarants disagree on a factual point that I intend to rely upon, it will be up to me to weigh each declarant’s evidence accordingly in view of the particular context concerned and their skills, knowledge, and experience as relevant to that context.
58. The fact that the expert declarants may be employed or commercially associated with one or other of the parties in some way does not necessarily mean I must automatically treat their evidence as being biased. I note that all the declarants, except Mr Drenth, have agreed to follow the Federal Court Expert Evidence Practice Note, and understand that their duty in giving evidence is to assist the Commissioner in coming to a decision on the opposition, rather than to any other party. The fact that Mr Drenth has not agreed to the Federal Court Expert Evidence Practice Note or not made statements about duties to the Commissioner does not mean I should treat his evidence as necessarily biased, though this, his long association with Boart Longyear and the fact he is the inventor of the application suggests I should treat his evidence with a degree of caution. Other than this, it is sufficient to state that it is up to me to determine whether any part of the expert evidence is affected by bias or as put by the Applicant at various points, hindsight, and to draw appropriate conclusions in view of this.
Inventive Step
59. The statutory basis for inventive step is set out at s7(2) and s7(3) of the 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.”
60. Although not expressly referred to in the Act, it has been accepted by the authorities that lack of inventive step in the Act is commensurate with the previous concept of obviousness under the Patents Act 1952 (albeit relying on a different prior art base); see Re James EarlWinner and Donna C Winner v Ammar Holdings Pty. Limited [1992] FCA 377 at [12]; (1992) 24 IPR 137 at 140.
The Approach to Obviousness
61. In terms of inventive step, the Opponent’s written submissions do not identify a problem to be solved as such, but put forward the reformulated Cripps question as the approach to be adopted at [67] of its written submissions. Perhaps unsurprisingly, the Applicant has pointed out, at [82] of its written submissions, that “…the Cripps question is not applicable in every case…”. However, I did not take the Applicant as fundamentally challenging the use of the reformulated Cripps question – questions raised by the Applicant about the approach taken by the Opponent in presenting or formulating alleged problems, (or a lack thereof), for example as put to the experts, are best understood as a criticism of the factual basis behind the Opponent’s inventive step arguments, rather than the principles to be adopted as such. In the present matter I do not see anything that suggests it is inappropriate to utilise the modified Cripps question.
62. I will utilise the reformulated Cripps question as per Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59; 212 CLR 411; 77 ALJR 398; 194 ALR 485; 56 IPR 129 at [53] as follows in assessing inventive step:
· Would the [skilled addressee] at the relevant date in all the circumstances ... directly be led as a matter of course to try [the invention claimed] in the expectation that it might well produce [a useful desired result].
Common General Knowledge (CGK)
63. Key to assessment of inventive step in the present matter is the CGK. Because of this I will now elaborate on relevant matters that I consider have been shown to be CGK. At the outset I note that the multiple ways that various components have been discussed has not assisted the analysis of what is CGK in the art.
64. The Opponent identifies what it considers to be CGK at [15] to [34] of its written submissions – the Applicant responds at [30] to [36] of theirs. I accept that the following matters are CGK as at the priority date:
· The mining industry uses boreholes to gain an understanding of underlying geology and to map underground structural features (Dupuis at [18]).
· Use of diamond (also known as diamond core drilling) to recover cylindrical rock samples (“cores”) used to understand the geology and map underground structural features (Dupuis at [18] & [19]).
· Cores are cut by a hollow cylindrical drill bit located at the end of a series of hollow cylindrical metal tubes called a drill rod. Drill rods provide rotational power to the drill bit to cut into the surrounding rock (Dupuis at [20]);
· The core is received within a core barrel (also known as an “inner tube”, “core tube”, “inner core barrel” or “inner core tube”), itself located concentrically inside the drill rod. The core barrel assembly allows for retrieval of the cut core (once “broken” from the surrounding rock) via a wireline (Dupuis at [21] and [22]; Reilly1 at [11]; Exhibit JBR-04 discussion of feature 1.1; Reilly2 at [7] and [8]; JBR-06 at pages 10 and 13; Brown1 at [29]; RCB-04 page 2, first paragraph; RCB-07, page 187 at no 2) for clarity and convenience I will simply refer to this feature from hereon as the “inner tube”.
· The inner tube being removably attached to a core barrel head assembly (also called a “head assembly” or a “back end assembly”) which provided for the deployment and retrieval of the inner tube from the borehole (Reilly1 at [11] and [39]; Exhibit JBR-04 discussion of feature 1.1; JBR-06 at pages 10 and 12; Reilly2 at [7] and Dupuis at [66]).
· The combination of the inner tube and the core barrel head assembly is known as the “inner tube assembly” or the “[inner?] core barrel assembly” (RCB2-02 interpretation of feature 1.1; Exhibit JBR-04 feature 1.1; Reilly2 at [7] and [8]; JBR-06 at page 12, discussion of “overshot assembly”; Dupuis at [21], [22] and [66] – note I take Professor Dupuis’s reference to “assembly” at [21] and the fact that this “assembly” is used to retrieve the core via a wireline to refer to the combination of the inner tube and core barrel head assembly, not just to the inner tube per se. This is reinforced by his discussion of “core barrel head assembly” and “core tube” at [66]. Based on JBR-06 at pages 14 and 18, it appears that the entirety of the inner and outer tube assemblies may be known as the core barrel head assembly, however as the outer tube assembly is not important to the present discussion, referring to the “core barrel assembly” as above does not cause any confusion in the present context and suggests that where the declarants refer to a “core barrel assembly” the inner core barrel assembly is meant).
· A conventional core barrel head assembly comprises an upper head assembly and a lower head assembly. This conventional core barrel assembly comprises the features apparent from the figure below from Reilly2, and as discussed at [8] of that declaration; see also JBR-06 at pages 12 and 58 to 76. The upper head assembly comprises all the features to the right of the green lines in the figure, whilst the lower head assembly comprises all the features to the left of those lines.
The grease cap of the conventional head assembly illustrated connects to the inner tube and provides grease for the spindle and associated components (Reilly1 at [25] to [27] and [39]; Reilly2 at [8]; Brown2 at [26]; Drenth at [12]; Professor Dupuis also refers to a “standard greaser unit” at [100], [101], [104] and [118] which is suggestive of these being CGK).
The check valve ball and check valve body of the conventional head assembly illustrated form a check valve assembly, which functions to restrict fluid flow through the inner tube, so as to allow for faster travel of the inner tube assembly down the borehole, and preventing the core being washed away by fluid (Brown2 at [20]; Reilly1 at [28], [37] and [38]; JBR-04, discussion of features 10.2, 12.3 and 14.2; Dupuis at [114] to [117]; Drenth at [12]).
Fluid communication ports (also known as “water ports”) were present at the check valve location to manage fluid flow (Reilly1 at [37] and [38]; JBR-04, discussion of feature 12.3; Drenth at [12]).
To be able to properly extract relevant information from cores and map underground features, it was important to be able to determine the orientation of the core within the surrounding rock formation from which it was extracted (Dupuis at [24]; RCB-08 page 68, “Orientated drill core”).
Because of the need to determine core orientation, core orientation devices of some kind were used to determine core orientation prior to its extraction from the surrounding medium, noting the wireline had inherent strains that mean the inner tube would spin in an uncontrolled way upon core retrieval (Dupuis at [24] to [26]).
Core orientation tools could be manual or digital in nature (Dupuis [37] to [48]; JCD-4; Brown1 at [26]; Brown2 at [22] and [24]; RCB-04 page 2 “Orientated Drillcore”; RCB-05, page 1, “Methods of drill core orientation”; RCB-07 pages 183 to 187).
Manual orientation devices included the spear, ball mark and EZ-mark tools (Dupuis [37] to [42]; JCD-4; Brown1 at [26]; RCB-04, page 22; RCB-05 first page, “Methods of drill core orientation”; RCB-07 pages 184 to 185).
Digital orientation devices included the Reflex ACT device (Dupuis at [35] and [47]; Brown2 at [22] and [23]).
Hermetic sealing of electronic components in a cavity/compartment of downhole tools (Brown2 at [23]).
Being hermetically sealed for downhole use means the seal must be able to withstand high pressures, for example 1500 psi (Reilly1 at [29].
There were reliability and sealing issues in using wired or physical data communication connections in downhole devices (Drenth at [11]).
The use of infrared communication between core orientation devices and a remote device (Dupuis at [84], Reilly1 at [43]).
65. There may be other items of potential or actual CGK, however I consider it convenient to discuss these in the context of considering inventive step per se.
66. As may be appreciated, the use of different nomenclature for essentially the same component(s), wherein the names used bear affinity to other, but apparently distinct, components within the same assembly or subassembly, and where identification of the assembly or subassembly concerned is by no means clear in all cases, and has meant that it has been rather difficult to determine exactly what features are meant by the expert declarants to form part of the CGK in some instances. The above distillation of CGK is based on my best understanding of how the various features would be known in the art after considering the relevant evidence. In some cases, to assist in supporting the resolution of any inconsistencies in the evidence and the conclusions I have reached, I have provided references to other parts of the evidence which refer to or use the features concerned in a manner consistent with the interpretation I have taken.
67. In its written submissions, the Applicant challenged, and, as I understood it by Mr Fox at the hearing, objected to the “conventional” head assembly as expressed in the figure from Reilly2 as follows at [36] of their written submissions:
“The Opponent provides at OS [19] a diagram of what it alleges is a conventional head assembly that it says formed part of the CGK at the Priority Date and which was also provided in Reilly#2. However, no reference to publication details of this document have been provided in Reilly#2 and no such head assembly can be discerned from Reilly#2, Exhibit JBR-06. Accordingly, this image, and the Opponent’s reliance it on as an indicator of CGK should be treated with caution.”
However, I am not persuaded by this. Firstly, the Applicant appears to be missing the point that Mr Reilly, as an expert witness, is able to provide evidence of what was known or done in the art even without reference to any extraneous material, and I have no reason to reject Mr Reilly’s contentions of CGK here. Indeed, it is apparent that the broad features of this figure are corroborated as CGK in view of other items of CGK discussed above.
68. Secondly, Mr Reilly states that JBR-06 was published in December 2008. JBR-06 itself is clearly marked “Copyright ©2008 Boart Longyear” on every page. The bottom of what I take to be every second page is marked “BOART LONGYEAR GLOBAL PRODUCT CATALOGUE ǀ IN-HOLE TOOLS ǀ 11-2008”. It appears reasonable to believe that “11-2008” refers to the document being revised or current as at November 2008. There is also the fact that the title page refers to “GLOBAL PRODUCT CATALOGUE: IN-HOLE TOOLS DECEMBER 2008. Given this and the fact that JBR-06 is a product catalogue, Mr Reilly’s statement that it was published in December 2008 is inherently plausible. Suggestions by the Applicant that the publication of JBR-06 is dubious are little more than speculation. I accept, on balance, that JBR-06 was published in December 2008.
69. Thirdly, the suggestion that the “conventional” head assembly is not to be found as such in JBR-06 appears to be incorrect. At the hearing, Ms Evetts took me to the core barrel head assembly presented at page 58 of JBR-06, and pointed out how each and every feature of Mr Reilly’s conventional head assembly was present in the core barrel assembly shown on that page. Whilst I am not concluding that JBR-06 was necessarily CGK as such, the fact that it represents a global catalogue of in hole tools for a major player in drilling services, published more than five years before the priority date, lends further plausibility to Mr Reilly’s contentions of CGK regarding the “conventional” head assembly.
70. Finally to be clear, whilst I accept that the “conventional” head assembly presented by Mr Reilly was CGK and thus the same can be said for the components thereof (noting it is a “conventional” head assembly), this does not necessarily mean that this is the only head assembly known in the art or that any one or more of the features of this conventional head assembly must form part of head assemblies known before the priority date. Indeed, as will be seen, the prior art documents raised by the Opponent comprise head assemblies that are missing features of the “conventional” head assembly.
The Opponent’s Inventive Step Case
71. Whilst a number of prior art documents were particularised for the purposes of s7(3) in the SGP, the Opponent has narrowed their s7(3) case to focus on WO 2010/091471 A1 (“D1”), WO 2012/012839 A1 (“D2”) and the combination of D1 and D2. Although some arguments going to s7(2) were present in the Opponent’s written submissions, no such argument was particularised in the SGP and was not pursued by the Opponent at the hearing.
72. As the Opponent appears to believe that D2 comprises the closest piece of prior art, and discussed this document first, I will commence by considering whether any of the claims lack inventive step in view of D2 considered with the CGK. I will then proceed to undertake the same task with respect to D1, and then ascertain whether any claims are obvious over a combination of D1 and D2 in view of the CGK.
D2 + CGK
73. D2 is titled “Core sample orientation system, device and method”. As stated on page under the heading “TECHNICAL FIELD”, “The present invention relates to a system, device and method for use in determining the orientation of a core sample relative to a body of material from which the core sample has been obtained.” It is thus clear D2 relates to precisely the same technical field as addressed by the present specification. Because of this, and the various aspects of the art as illuminated earlier in this decision, I will accordingly abbreviate my discussion of D2 to what is only necessary for the purposes of determining inventive step.
74. D2 commences with a discussion of the prior art and some issues with the same. These include:
· the greater length of the core barrel head assembly due to the insertion of a two unit device incorporating an orientation device and greaser unit in place of a single standard greaser unit; this additional length necessitates a longer outer tube assembly;
· O-ring sealing issues, leading to damage to electronics of the orientation device; and
· The need to disassemble the orientation unit from the greaser to view the display of the orientation device and rotate the core to the correct orientation.
75. It is then stated, on page three that:
“It has therefore been found desirable to provide an improved core orientation system, device and method that alleviates these problems whilst facilitating more reliable data recovery.”
76. The further disclosure of D2 is perhaps best understood by reference to the figures thereof. In this regard, figures 5, 7 and 8 illustrate an embodiment from D2 that is most relevant for present purposes. Figure 5, reproduced below, illustrates a core sample orientation data gathering device 42. As I understand it from D2, the core sample orientation data gathering device 42 is an electronic device that gathers core orientation data whilst downhole using known means and methods. It comprises a first end 44 and a second end 48.
77. The following from pages 9 and 12 provide some important characteristics, for present purposes, of the core sample orientation data gathering device 42:
“The core sample orientation data gathering device 42 is a fully sealed cylindrical unit with screw threads at either end. A first end 44 connects to a standard length and size greaser unit 46 and a second end 48 connects to a core sample tube 50. The greaser unit connects to a standard backend assembly 20.” (page 9)
“The core sample orientation data gathering device of the present invention is hermetically sealed against ingress of water or other liquids, even at operative borehole depths and conditions. No additional or alternative sealing, such as separate o-ring seals between the greaser and core sample orientation data gathering device or between the inner core tube and the core sample orientation data gathering device are required. Thus, maintenance or risk of ingress of liquid are not of concern.” (page 12)
78.
Figure 7, reproduced below, shows further details of the first end 44. As can be seen, the first end 44 comprises a window 72, behind which are two indicator lights comprising red LED 74 and green LED 76. The LEDs 74, 76 are illuminated in such a way as to convey the correct direction to rotate the inner tube so as to orientate the core and to indicate when correct orientation has been reached.
79. D2 contemplates wireless communication with the core sample orientation data gathering device 42:
“Figure 6 [not reproduced] shows an embodiment of the hand held device 60 which receives wirelessly receives data or signals from the core sample orientation data gathering device 42. The core sample orientation data gathering device 42 includes a transmitter which can use line of sight data transfer through the window, such as by infra red data transfer, or a wireless radio transmission. The communication device 60 can store the signals or data received from the core sample orientation data gathering device 42.” (page 10)
80. Also visible on figure 5 (but unlabelled) are degree markings present on the external surface of the core sample orientation data gathering device 42. Similar degree markings can be seen on the first end 44 of figure 7. The purpose of these is explained on page 11:
“The visual and/or audible indicators, under certain site and/or environmental conditions, may not be sufficiently visible or audible. They may be hard to see in bright light conditions or hard to hear in loud working environments. Thus, an additional or alternative means and/or method may be utilised to ensure that the core sample has been correctly orientated. The outer casing or body or an end of the core sample data gathering device 42 may have angular degree marks. These may be scribed, etched, machined, moulded or otherwise provided, such as by printing or painting, on the device 42. For example, as shown in figure 7 dashes equally spaced around the outside parameter (each representing one or more angular degrees of the full circle or perimeter). Further scribing of a number every five dashes starting with the number ‘Or an 0’ then 5, 10, 15 etc. until 355. When the core is retrieved and the orientation device communicates with the hand held communicator 60, additional information is transmitted from the orientation device to the communicator 60, such as a number between Zero and 359 (inclusive) denoting an angular degree of rotation of the core sample orientation data gathering device and the core sample. When the core is oriented during one or more embodiments of the method of the present invention, scribing on the core sample orientation data gathering device 42 number on the top side should be the same as the number transmitted to the communicator 60, which re-confirms correct orientation. Thus, if the visual or audible means for indicating core orientation are not useful or available, then the core is oriented using the angular degree arrangement (top side) to match the number transmitted, and then this would be audited using the communicator 60 as is the case now.”
81. Incorporation of the core sample orientation data gathering device 42 in an inner tube assembly is shown on figures 8a and 8b, which are reproduced below. On these figures “A” (and associated arrow) indicates the drill bit end (i.e. closest to the bottom of the drill hole), whilst “B” (and associated arrow) indicates the uphole direction. The inner tube assembly comprises the inner tube 50, data gathering device 80, standard greaser unit 46 and the remainder of the core barrel head assembly (not labelled or shown, but taken to connect to standard greaser unit 46). The data gathering device 80 includes core sample orientation data gathering device 42 as discussed above including first end 44, window 72 and LEDs 74, 76.
82. However, an optical adapter 82 is provided at the end of the core sample orientation data gathering device 42. The optical adapter 82 comprises reflectors 86 that allow light from the LEDs 74, 76 to be visible through apertures 86 in the greaser unit 46, when the data gathering device 80 is connected to the greaser unit 46, as illustrated in figure 8a. This arrangement means core orientating light signals from the LEDs 74, 76 are visible without having to disassemble the data gathering device 80 from the inner tube assembly.
83. And specifically in connection with the embodiment of figures 8a and 8b at page 13:
“It will be appreciated that the adapter need not extend into a greaser. A tube section or other component having at least one aperture to observe the light through is sufficient. The red-green indications (or whatever selected colour combination of light is used) can be observed through the aperture(s) when rotating the device to obtain core sample orientation. Thus, advantageously, when the data gathering device and core sample are recovered from down the hole, the data gathering device need not be separated from the greaser in order to determine a required orientation of the core sample. Wireless communication to a remote device, such as a hand held device, to transfer data between the data gathering device and the remote device, can also be effected (sic) by transmitting through the at least one aperture.”
84. In view of the above, I will list below those features that I consider are disclosed in D2, with features not considered to be disclosed crossed out. I will provide further explanation for my conclusions below where I think this is appropriate.
[1.1] A core barrel head assembly having an exterior surface (data gathering device 80, greaser unit 46 and remainder core barrel head assembly to the right of “B”) comprising:
[1.2] a first interior cavity (cavity inside greaser unit 46);
[1.3] a sealed interior cavity spaced distally from the first interior cavity (data gathering device 80);
[1.4] a threaded proximal end portion for coupling to a wire line retrieval portion of a head assembly (considered inherent with a standard greaser unit 46);
[1.5] a base portion, wherein the first interior cavity extends distally from the threaded proximal end portion to the base portion (considered inherent in standard greaser unit 46);
[1.6] a port positioned proximate the base portion and extending from the exterior surface into fluid communication with the first interior cavity (apertures 84 meet the plain definition of a port);
[1.7] a window that extends from the exterior surface into optical communication with the sealed interior cavity proximate the closed proximal end of the sealed interior cavity(as I will discuss further below, an aperture is not a window)[1.8] at least one electronic instrument that is configured to obtain orientation data mounted therein the sealed interior cavity;
[1.9] wherein the at least one electronic instrument comprises at least one digital and/or electro-mechanical sensor in a core orientation data recording tool that can be configured to determine a core orientation of a sample core just prior to or after a core break;
[1.10] a power source in operable communication with the at least one electronic instrument, wherein the power source is mounted therein the interior cavity (whilst not explicit, there must a power source within the sealed cavity to power the core sample orientation data gathering device 42, particularly noting that the core sample orientation data gathering device 42 is said to be hermetically sealed and there is no disclosure that otherwise goes to where the power source is located)
[1.11] a transmitter configured to transmit core orientation data;
[1.12] an open and threaded distal end portion, wherein the sealed interior cavity extends distally to the open and threaded distal end portion of the core barrel head assembly (this would appear to exist due to facilitate male threads on inner tube 50, however, as noted it is not clear whether this cavity is “sealed”)
[1.13] a check valve assembly configured to affect a hermetical seal of the sealed interior cavity and to provide fluid control for wire line operation;[1.14] wherein the sealed interior cavity is sized and shaped to hermetically enclose the at least one electronic instrument and the power source.
85. Although the Opponent has conceded novelty, as I understand it, both in the written submissions and at the hearing, it does seem that the Opponent argued that D2 disclosed all the features of claim 1. Clearly I disagree with respect to integers 1.7 and 1.13, and I will now discuss why in more detail. The Opponent provided an annotated version of figures 8a and 8b of D2 in support of its views on D2. I have reproduced this below to assist in discussion.
86. With respect to integer 1.7, I disagree with the Opponent’s views, not least due to the fact that an “aperture” would not be understood to be a “window”. This much is apparent the definitions of these from the Macquarie English Dictionary:
“aperture
…
noun 1. a hole, slit, crack, gap, or other opening.2. the opening in the diaphragm of an optical instrument which controls the amount of light allowed to enter; in a camera, usually measured as an f number or f-stop, the smaller the f number the larger the opening.”
“window
…
noun 1. an opening in the wall or roof of a building, the cabin of a boat, etc., for the admission of air or light, or both, commonly fitted with a frame in which are set movable sashes containing panes of glass.
2. such an opening with the frame, sashes, and panes of glass, or any other device, by which it is closed.
3. the frame, sashes, and panes of glass, or the like, intended to fit such an opening.
4. a windowpane.5. anything likened to a window in appearance or function, as a transparent section in an envelope, displaying the address.”
87. At the hearing Ms Evetts, as I understood it, submitted that the combination of window 72, optical adapter 82 and apertures 84 as reading onto integer 1.7 (and the features of claim 5 for that matter). However, whilst functionally this combination would provide for the passage of light from the core orientation device to the exterior of the core barrel head assembly, as does integer 1.7, a coincidence of function does not necessarily mean a coincidence of features. I fail to see how these features would clearly be understood to collectively define a “window” within the plain meaning of the word. The interpretation offered is rather suggestive of construing with a view to anticipation, rather than a realistic appraisal of what is disclosed in D2.
88. Ms Evetts also pointed to claim 5 as supporting the proposition that the “window” in claim 1 could, in effect, simply be an aperture. It is helpful to reproduce claim 5 as below:
“The core barrel head assembly of Claim 4, wherein the core barrel head assembly comprises a plurality of windows that extend from the exterior surface into optical communication with the sealed interior cavity proximate the closed proximal end of the sealed interior cavity, wherein the orientation indicator module is sized and shaped to sealingly close the sealed interior cavity from any intrusion of pressurized fluid into the sealed interior cavity via the plurality of windows.”
89. As I understand it, the fact of the orientation indicator module being sized and shaped so as to seal the sealed interior cavity from pressurised fluid that may ingress via the window, as well as similar wording in the specification, is taken, by the Opponent, to mean that the window of claim 1 may simply be an aperture. However, in my view this is not a clearly sufficient basis to simply depart from the plain meaning of “window”, though I note the overall rather sparse treatment of the window in the specification has not been helpful in resolving the matter. Rather, it would seem, in view of the inherent limitations in sealing a window in the downhole environment, that claim 5 simply defines an additional sealing mechanism to any seal provided by the windows. This much is indicated by Professor Dupuis at [31], [32], [35] and [37] of his declaration.
90. Whilst all Messrs Brown and Reilly and Professor Dupuis all agree that integer 1.7 is present in D2 (see JBR-05, JCD-6 and RCB2-03), construction is a matter for the decision maker. Given that an entirely plain use of the word “window” is used, expert evidence is of little assistance in construing the meaning of this word here. Suffice to state that, in my view, the Opponent’s experts appear to have taken optically functional equivalence to be sufficient in terms of disclosure. Professor Dupuis, whilst taking a plain meaning of “window” in his declaration appears to have overlooked, in concluding D2 discloses integer 1.7 at JCD-6, that the relevant “exterior” for the purposes of integer 1.7 is that of the core barrel head assembly per se, rather than the end of the sealed cavity. Alternatively, it also seems, from [100] of his declaration, that he may consider the optical adapter 82 to comprise the optical material for the apertures 84 with these two features thereby forming a “window”. In my view this is a rather contrived construction that does not read onto the plain meaning of the “window” as defined in integer 1.7.
91. With respect to integer 1.13, the Opponent has argued, at [64] of its written submissions, that the skilled addressee would understand that this feature must be present. The Opponent pointed to Reilly1 at [37] to [39] in support of the presence of integer 1.13:
“In my experience, a ‘check valve assembly’ is present on all grease cap ranges, such as B, N, N2, H, and P to name a few. This is always located at the base / bottom of the grease cap at the connection point with the inner tube / barrel. The check valve has a body that screws into the bottom of the grease cap, and a ball which sits inside of a machined cavity in the grease cap. These features also require fluid communication ports (or water ports, as they are known in the industry) to be present at the check valve location to manage drilling fluid flow in this area during the deployment and retrieval of the inner core tube assembly. This design feature is very well known in the industry and pre-dates April 2014.
The check valve must be placed at the top connection point of the inner tube. Its purpose is to restrict fluid communication into and out of the inner tube component. The benefit of this is that it prevents core being flushed away by water flow delivered by the drill rig. When descending into a borehole, fluid in the drill string will push onto the ball and push it away from the valve seat, allowing fluid to flow out of the water ports and around an annulus between the tool body and the drill barrel rod assembly. When the inner tube assembly lands (seats) downhole, the weight of the ball causes it to drop into and rest on the chamfered seat. When the drill pump starts pumping fluid downhole to start the drilling process, the ball restricts fluid flow causing water flow to continue down an annulus between the barrel and the inner tube assembly and not into the core tube.
Grease caps are specific to all standard exploration backend assemblies. These range in size in greater and smaller diameter ranges, such as B, N, N2, H and P, to name a few. All of the sizes mentioned will use a core head assembly or backend to deploy and retrieve the inner tube in and out of the drill string. These core head assemblies require a grease cap to house a hanger spring and spindle shaft assembly that rotates at high speed (RPM) throughout the drilling process. The main features of a standard grease cap are an internal cavity to house the above mentioned components, and allowing fluid communication into this cavity to allow a grease compound to be added to prevent premature wear and failure of the internal rotating part. This is achieved via a grease nipple and secondary grease gun applicator. A secondary feature present on grease caps is usually the check valve, as described above. Grease caps are commonplace in the industry and predate April 2014.”
92. The first problem for the Opponent is that it is not apparent from D2 that a grease cap is in fact interposed in some way between the inner tube 50 and the data gathering device 80. At best, Mr Reilly’s evidence suggests that a grease cap would be present in this location for a conventional core barrel head assembly, however there is no reason to suppose that the core barrel head assembly of D2 is “conventional”, nor is there any evidence to that effect.
93. Secondly, the nature of the core sample orientation data gathering device 42 and data gathering device 80, as best understood, is suggestive that integer 1.13 is not necessarily present. In this regard, it is not entirely clear, in the first instance, from the figures whether core sample orientation data gathering device 42 is mounted within a cavity of data gathering device 80 or it is simply the case that the data gathering device 80 essentially consists of the core sample orientation data gathering device 42. The presence of degree markings on the outside of data gathering device 80, as well as the hermetic seal of core sample orientation data gathering device 42 itself, and the fact the core sample orientation data gathering device 42 is designed to simply bolt as is into the inner tube assembly using threads means it is rather more likely than not that the data gathering device 80 essentially consists of a modified form of core sample orientation data gathering device 42 (noting, based on figure 8b, that data gathering device 80 appears to comprise a female threaded connection for inner tube 50 as opposed to the male threads present on figure 5, whilst the up hole end appears to have male threads for connection to standard greaser unit 46, as opposed to the presumably female threads of figure 5). Noting that no other features are explicitly present between the inner tube 50 and data gathering device 80, this then further suggests that the internally threaded cavity in data gathering device 80 which allows for coupling to the inner tube 50 is hermetically sealed at its upper end to protect the electronics, in line with the teaching of D2 that the core sample orientation data gathering device 42 is intrinsically hermetically sealed.
94. Hence, in view of this understanding of D2, there is no need for any further hermetic sealing of the cavity holding the electronics in data gathering device 80 because it is hermetically sealed anyway. Further, even if a check valve was present it is quite possible, depending on its precise arrangement in/on the data gathering device 80, that it hermetically seals a different cavity (i.e. the internally threaded cavity which receives male threads of inner tube 50) from the one that contains the electronic instruments of integer 1.8, and hence integer 1.13 would still be absent. Of course, the Opponent could argue that if the check valve was present, then hermetic sealing of the cavity would be affected by this, rather than by some other internal hermetic seal as I have posed above, that is there is no intervening cavity between the check valve assembly and the sealed cavity. The difficulty with this is that, even assuming the check valve assembly is present and can be relied upon for hermetic sealing, there is nothing in D2 to suggest that this is the case one way or the other; it is quite possible that it is hermetically sealed using means other than a putative check valve assembly.
95. The Opponent has pointed to the alleged presence of “apertures/ports” on core sample orientation data gathering device 42 as evidence that a check valve is present, and points to Mr Reilly and Mr Brown’s evidence to support this. The evidence concerned comes from discussion of integer 1.13 with respect to D2 from the claim tables filled out by Mr Reilly and Mr Brown, where they indicate whether they consider each of the integers are disclosed in items of prior art or not. The relevant evidence is repeated below:
“No. No check valve assembly is specified. However, there are ports or apertures at the downhole end of part (42) in Figures 4 and 5. Their purpose is never specified, and they appear they could be for a check valve assembly.” (RCB2-03)
“Partially, I believe the check valve in D2 does not create a hermetical seal of the sealed interior cavity, but it does provide fluid control for the wire line operation. I have made this assumption by the placement of the check valve shown in Figure 5 marked 48 (second end) and 44 (indicator end), where I believe 44 is the most logical end for the electronics to be inserted to create the sealed cavity” (JBR-05)
For completeness, I note Professor Dupuis considers that there is no disclosure of a check valve in D2 in his discussion of integer 1.13 at JCD-6.
96. This evidence hardly assists the Opponent’s contentions of inherency regarding integer 1.13. What this evidence suggests is that it is by no means clear that a check valve assembly is in fact present, but if one is then it does not hermetically seal the sealed interior cavity.
97. I also note this at [25] of Reilly1:
“Parts of D2 were less clear, not helped by not including sectioned images, and required some interpretation based on my knowledge of the industry. For example, Figure 5 (42) is indicated as the ‘orientation data capturing device’ but from my evaluation of the design features shown, I identify this as having the same features as a standard grease cap. I make this observation due to identifying the following design features which are present in Figure 5 and in any grease cap: fluid communication ports, external thread feature for coupling to an inner tube / barrel (this example appears to be N2 size specifically), and a check valve body, which is identified by the machined flat on its outer diameter.”
A first difficultly with this is that the core sample orientation data gathering device 42 of figures 8a and 8b does not appear to be, as discussed above, identical in structure to the device pictured in figure 5. Secondly, neither Mr Brown nor Professor Dupuis have suggested that these features are present. Thirdly, even assuming the features depicted bear an affinity to features from a standard grease cap, it is not clear that one would take these features to be the same, noting that core sample orientation data gathering device 42 is clearly designed to perform very different functions to a standard greaser unit.
98. With respect to integer 1.2, it is difficult to see how the standard greaser unit 46 does not comprise a first interior cavity – these inherently have a cavity to contain grease for core barrel head assembly components. Based on figure 8b, it must also at least have a cavity to allow for attachment of the data gathering device 80 and to receive optical adapter 82. The Applicant contentions are premised on a particular construction of the claimed invention, specifically to do with integration of the core orientation device. This is apparent at [31] and [48] of the Applicant’s written submissions:
It is then stated, on page 2 that “It is against this background, and the problems and difficulties associated therewith that the present invention has been developed.”
The further disclosure of D1 is perhaps best understood by reference to the figures thereof. In this regard, figures 7, 9 and 10 help illustrate the disclosure of D1 that is most relevant for present purposes. Figure 7, reproduced below, illustrates a housing 15 comprising a lower body part 21 and an upper cap part 22, which may be separated to access an inner compartment 23 defined by lower body part 21 and upper cap part 22. The inner compartment 23 houses a first tool portion 11 (unlabelled) which can record core orientation data. Lower body part 21 has an end 25 comprising spigot 26 that connects using threads to complementary socket 27 of upper cap part 22. Sealing means 29 (shown as o-rings) effects fluid tight sealing between lower body part 21 and upper cap part 22. The lower body part 21 and upper cap part 22 define first (lowermost) section 31, second (intermediate) section 32 and third (uppermost) section 33 of housing 15, each of these sections having a generally circular cross section.
As can be seen from figure 7 and figure 9, reproduced below, housing 15 comprises bottom end 16 that connects to core tube 13 using female threads 43 of coupling 41 in first section 31, whilst top end 18 connects to conventional backend portion 19 (i.e. what I take to be the conventional core barrel head assembly discussed as being CGK above) using male threads 73 of threaded coupling 71 in third section 33. The connection of core tube 13, housing 15 and backend 19 forms assembly 17, which is lowered into a borehole using conventional means to take core orientation data using first tool portion 11.
First section 31 comprises cavity 47 that fluidically communicates with core tube 13 when housing 15 is connected thereto. Cavity 47, in conjunction with circumferentially spaced ports 49, provide a fluidic path between the interior of core tube 13 and the exterior of housing 15. A valve 51 allows selective fluid from the interior of the core tube 13, through the cavity 47 and out of ports 49, using a known check valve operation via ball 55, valve seat 57 and valve housing 59; the ball 55 remains in recess 65 and away from valve seat 57 during descent due to fluid pressure, such that fluid may flow from the core tube 13, through cavity 47 and out of ports 49 to the exterior of housing 15. Conversely, fluid pressure during ascent forces ball 55 against valve seat 57 and away from recess 65, such that ports 49 are blocked and fluid cannot enter the core tube 13 from the exterior of the housing 15.
Third section 33 also comprises a plurality of ports 79 that allow for a fluidic path from the interior of back end 19, through cavity 77 of third section 33 to the exterior of housing 15.
Hence the effect of cavity 47 ports 49, valve 51, cavity 77 and ports 79 is to provide a fluidic path during descent extending from the interior of core tube 13 to the interior of back end 19 via the exterior of housing 15 (noting that the assembly 17 is contained within the outer tube). Conversely, whilst fluid can flow from the interior of the back end 19 to the exterior of the housing 15 during ascent, fluid cannot flow from the exterior of the housing to the interior of the core tube 13. This arrangement is said to allow for rapid deployment of the assembly 17 by reducing its fluidic drag during descent in the borehole . Although not stated, it would also seem to be the case that this arrangement also assists in preventing fluidically induced damage or loss of soft core samples during ascent of the assembly 17 through the borehole.
Once the assembly 17 has been retrieved to the surface, the parts 21, 22 of housing 15 can be separated so that second tool part 12 can cooperate with first tool portion 11 and thereby receive and process core orientation data. This is illustrated on figure 10, which is reproduced below.
In view of the above, I will list below those features that I consider are disclosed in D1, with features not considered to be disclosed crossed out. I will provide further explanation for my conclusions below where I think this is appropriate.
[1.1] A core barrel head assembly having an exterior surface (combination of housing 15 and conventional back end 19 comprises a back end/core barrel head assembly) comprising:
[1.2] a first interior cavity (cavity of conventional back end 19 that receives top end 18);
[1.3] a sealed interior cavity spaced distally from the first interior cavity (inner compartment 23);
[1.4] a threaded proximal end portion for coupling to a wire line retrieval portion of a head assembly (inherent in conventional back end assembly 19);
[1.5] a base portion, wherein the first interior cavity extends distally from the threaded proximal end portion to the base portion (inherent in a conventional back end assembly 19);
[1.6] a port positioned proximate the base portion and extending from the exterior surface into fluid communication with the first interior cavity (inherent in conventional back end assembly 19);
[1.7] a window that extends from the exterior surface into optical communication with the sealed interior cavity proximate the closed proximal end of the sealed interior cavity;[1.8] at least one electronic instrument that is configured to obtain orientation data mounted therein the sealed interior cavity (first tool part 11 is inherently considered to be electronic);
[1.9] wherein the at least one electronic instrument comprises at least one digital and/or electro-mechanical sensor in a core orientation data recording tool that can be configured to determine a core orientation of a sample core just prior to or after a core break;[1.10] a power source in operable communication with the at least one electronic instrument, wherein the power source is mounted therein the interior cavity (whilst not explicit, there must a power source within the sealed cavity to power the first tool part 11 and there is no disclosure that otherwise goes to where the power source is located)
[1.11] a transmitter configured to transmit core orientation data;[1.12] an open and threaded distal end portion, wherein the sealed interior cavity extends distally to the open and threaded distal end portion of the core barrel head assembly (cavity 47 with threads 43)
[1.13] a check valve assembly configured to affect a hermetical seal of the sealed interior cavity and to provide fluid control for wire line operation(whilst there is a check valve 51, the assembly thereof does not hermetically seal inner compartment 23);[1.14] wherein the sealed interior cavity is sized and shaped to hermetically enclose the at least one electronic instrument and the power source (considered inherent noting that first tool part 11 is an electronic device).
With regard to integers 1.8 and 1.10, based on the contextual references to the first tool part 11 being able to record orientation data, and this data later being processed, I take the first tool part 11 to be electronic in nature. Whilst not explicit in D1, there must a power source within the sealed cavity to power the first tool part 11.
Whilst I accept that the first tool part 11 is electronic, it is not clear to me that this necessitates a disclosure of integer 1.9. I do not consider that integer 1.9 necessarily requires the device to actually determine a core orientation just prior to or after core break, only that it is capable of being configured to do so. However, the difficulty I have is that it is not clear to me that the first tool part 11 necessarily has that capability. In this regard I note that D1 incorporates by reference WO 2006/024111 and AU 2009900670, and specifically refers to these as providing an example of a core orientation device that may be used according to the present specification. Although it could be argued that these documents thereby provide a disclosure of integer 1.9, the fact these documents are not in evidence closes down this possibility.
Besides the references to WO 2006/024111 and AU 2009900670, the nature of the first tool part 11 is not discussed in any detail. As best understood, the fact that the processing is performed by second tool 12 seems to suggest that first tool part 11 merely records raw data and does not process this to actually determine the core orientation in any way. In any case, the lack of any further detail as to the first tool part 11 leaves it, at best, as an open question as to its capabilities – this can hardly be said to lead to a clear disclosure of integer 1.9. To the extent the declarants consider this integer is present in D1, I am of the view that they have simply not properly addressed the requirements of the integer or have read more into the disclosure of D1 than is justified.
With regard to integer 1.13, it would not be understood, in my view, that the check valve 51 or the assembly thereof hermetically seals the inner compartment 23. Rather, as best understood from the figures the lowermost end of the inner compartment 23 is formed by a solid mass of material in the lower body part 21, with this mass bounding the innermost cavity 23 on one side and the other side forming the recess 65. It seems to me to be unnaturally contrived, and the result of construing with a view to anticipation, to consider this solid mass to form part of a valve assembly that hermetically seals the inner compartment 23.
The Opponent has argued that the only integer missing from D1 is 1.7. Similarly as for D2, the Opponent provided an annotated figure 7 annexed to its written submissions, however I have not reproduced this here as I do not consider it is of great assistance to the discussion.
Reasons why I disagree with the Opponent with respect to integer 1.13 should be apparent, though I note that the Opponent has not discussed the alleged presence of integer 1.13 in any detail – the existence of a check valve appears to have led to an assumption by the Opponent that integer 1.13 must be present in D1.
With respect to integer 1.9, the Opponent has argued, at [44] of its written submissions that:
“D1 discloses a housing that can accommodate any core sample orientation device; or indeed any appropriate downhole device. As D1 states ‘[w]hile the background of the invention has been described in relation to deployment of a core sample orientation device, or a downhole component thereof, it should be understood that the invention may be applicable to deployment of any appropriate device within a borehole’. In these circumstances, a skilled addressee would not understand D1 to be limited to a housing assembly containing any particular electronic orientation device; and that it could include, for example, the Reflex ACT, which was the most widely used and dominant tool at the Priority Date; and which had: (a) internal silicon accelerometers; (b) LED lights, an audible signal and an LCD screen to direct the operator towards the correct orientation alignment; and (c) a battery power source.”
The fact that any known core orientation device may be used in D1 is not a specific disclosure of a specific use of any particular one of the existing devices, no matter how well known, within D1. This is confounding questions of the disclosure of certain features with alleged obviousness of the same.
The Opponent also points to page 9 of D1 and Professor Dupuis’s evidence in support of its contentions on integer 1.9. However, I do not consider that these assist the Opponent’s case. If anything, page 9 from D1 simply suggests that the first tool part 11 merely collects raw data with this being processed by second tool part 12 to determine core orientation:
“The core orientation system utilised in this embodiment comprises a first tool portion adapted for connection to a core tube for recording data relative to the orientation of the core tube, and a second tool portion adapted to cooperate with the first tool portion to receive and process orientation data from the first portion and provide an indication of the orientation of the core sample within the core tube at the time of separation of the core sample from the underground environment from which it was obtained. With such an arrangement, the first tool portion is deployed underground in a borehole with the core tube to record data corresponding to the orientation of the core tube (and any core sample contained therein). Once the core tube, along with the first tool portion attached thereto, had been retrieved from underground, the second tool portion is brought into cooperation with the first tool portion to receive and process the orientation data received from the first portion.” (emphasis added)
Similarly, while Professor Dupuis’s evidence indicates that an electronic device is present, it suggests that its nature is not specified (something I note that is essentially corroborated by Mr Brown in RCB2-03). Given this, it is difficult to conclude that the electronic device of D1 can in fact be configured to determine core orientation of a sample core just prior to or after a core break.
With respect to integer 1.11, the Opponent, at [48] of its written submissions, relied upon the evidence of Messrs Reilly and Brown and Professor Dupuis as to the inherent existence of a transmitter. However, noting that I take a transmitter to comprise a means of wirelessly sending data, I am not persuaded that a transmitter is necessarily present. D1 merely refers to the second tool 12 as being “…adapted to cooperate with the first tool portion to receive and process orientation data from the first tool portion…” (page 9, lines 7 and 8) and:
“The second tool portion 12 can then be brought into cooperation with the first tool portion 11, as shown in Figure 10, to receive and process the orientation data received from the first tool portion 11.” (page 14, lines 27 to 30)
This, and noting the arrow on figure 10, indicates that the “cooperation” is achieved by physically connecting the second tool part 12 to the first tool part 11. Even assuming that one would consider “cooperation” as used in D1 to be broad enough to essentially cover any means known in the art whereby data is transferred from first tool part 11 to second tool part 12, this is not necessarily a disclosure of wireless communication. I am not satisfied that D1 implicitly discloses a transmitter as per integer 1.11.
As I understand it from the Applicant’s written submissions and from the hearing, the Applicant contends that integers 1.7, 1.9, 1.12 and 1.13 are not disclosed in D1. Again, whilst the Applicant provided an annotated copy of figure 9 from D1 as Annexure B to its written submissions, I have not reproduced this here as I do consider it assists in advancing the discussion.
With respect to integer 1.12, it is not entirely clear to me why the Applicant considers D1 lacks this integer. Regardless, I am of the view that this is clearly disclosed via cavity 47 and threads 43.
It now remains to determine whether the skilled addressee would, at the priority date in all the circumstances directly be led as a matter of course to try claim 1 in the expectation that it might well produce a useful desired result. In effect this comes down to whether the skilled addressee would be led as a matter of course in the circumstances to add integers 1.7, 1.9 and 1.13 to D1. In my view, I do not consider that the skilled addressee would be so led, for reasons I will explain further below.
With regard to integer 1.7, I am not satisfied that the skilled addressee would seek to add this feature for similar reasons as discussed with regard to D2. I note that the absence of apertures in D1 means there may some motivation, due to known difficulties with physical communication ports (see Drenth at [11]) to utilise infrared communication, however it would seem that this, if adopted, would simply be achieved via an axial window as discussed above in connection with Professor Dupuis’s evidence, and therefore one would not arrive at integer 1.7.
Also relevant regarding D1 is the putative motivation for modification suggested by Mr Reilly at [44] of his first declaration, highlighted by Ms Evetts at the hearing:
“Since before April 2014, when developing core orientation tools there has been a design requirement to reduce thread wear and reduce operational steps. I believe it is likely that an engineer seeking to resolve this, before 21 April 2014, would go down the pathway towards, and arrive at, directing communications through a sidewall of a tool, rather than an end wall.”
Even if I accept the well-known existence of a motivation to reduce thread wear and operational steps, it is not clear to me that this evidence renders it obvious to modify D1 and so arrive at integer 1.7. Again, Mr Reilly’s evidence here is quite perfunctory and the fact he had viewed the specification in suit before giving this evidence means I cannot be satisfied that it is free of hindsight analysis. Professor Dupuis’s detailed statements about problems with windows on an exterior surface of the core barrel head assembly were not addressed by Mr Reilly in reply, which further undermines the probative value of Mr Reilly’s evidence here.
Notably Mr Brown makes no statements to this effect in his declarations; although he does make a very general statement about the claims defining known apparatus for a known purpose at [28] of Brown2, which, in my view, is also infected with hindsight for similar reasons as discussed with regard to Mr Reilly’s evidence. Of interest, even where Mr Brown was given only the background of the specification, including paragraph [0008], which was said by Mr Fox to impermissibly lead the declarants to the claimed invention, Mr Brown in no way jumps to reducing operational steps by arranging for communication of orientation data without the need for disassembling the head assembly. Rather he states, at [29] of Brown1:
“Also, para [0008] states ‘It has been found desirable to provide an improved core barrel assembly having an integrated sample orientation subassembly and method for using same that is configured for use in a core sample down hole surveying and sample orientation that minimizes the need to add additional drill string elements, which allows for increased efficiency and speed of drilling’. This statement hardly makes sense. It sounds as if the statement is meaning to say that for the sake of efficiency, it is desirable to develop an integrated subassembly of the core inner tube that both orients the core and surveys the hole.”
This further reinforces the difficulties noted above with [44] of Reilly1.
But in any case, even if I did take Mr Reilly’s statements at face value, it still does not mean one would necessarily arrive at integer 1.7. It by no means indicates precisely how the skilled addressee would facilitate communications via a sidewall rather than an end wall. Given the discussion above concerning windows and D2, it seems rather more likely, in my view, that the skilled addressee would adopt the window 72, optical adapter 82 and apertures 84 arrangement of D2, than arriving at integer 1.7, but I note that even this is little more than speculation based on the evidence before me. I am not satisfied that the skilled addressee would, as a matter of routine, modify D1 so as to incorporate integer 1.7.
Although this is sufficient to dispose of the Opponent’s inventive step arguments with respect to D1, I will consider integers 1.9, 1.11 and 1.13 below as well.
With regard to integer 1.9, I note that I have concluded that the Reflex ACT instrument was CGK before the priority date. As I understand it, this instrument clearly has the capability to be configured to determine core orientation of a sample core just prior to or after core break, and is in fact so configured; see Dupuis at [43], [47] and [48], RCB-04 at page 18, RCB-05 under the heading “Reflex”, Brown2 at [22] and JCD-4 under the heading “Back End Methods” (note while JCD-4 was published about six months after the priority date, it was received some two months after the priority, therefore I am of the view that, on balance its discussion of the Reflex ACT tool reflects what was well known before the priority date).
Of course, it is another matter as to whether the Reflex ACT instrument would be incorporated into D1 by the skilled addressee as a matter of routine. The Applicant suggests, at [66] of its written submissions that:
“While Mr Brown says that the Reflex ACT tool was widely used and was a dominant tool at the Priority Date, the Opponent has not provided evidence that the Reflex ACT tool would be considered (by a PSA) an “appropriate device” in the context of D1. As to this latter issue, a photograph of the Reflex ACT tool is shown in Dupuis, Exhibit JCD-4 (Bright et al) and is reproduced below. It is clear that the Reflex ACT tool would not be appropriate given it has been said to be ‘attached to the top of the core barrel’”.
It is not clear to me why attachment to the top of the core barrel would apparently preclude the incorporation of the electronics of the Reflex ACT tool in D1. However, I take the Applicant’s point that there is no evidence going to why the skilled addressee would (as opposed to could) in fact adopt the Reflex ACT tool (or any other known electronic device for that matter) in some way for the core sample orientation device of D1 and so arrive at integer 1.9. Based on the evidence before me I cannot conclude that the skilled addressee would, as matter of routine, in fact be directly led to integer 1.9.
With regard to integer 1.11, as noted above, I am satisfied that wireless communication, at least of the IR kind, is well known in the art. Given the well-known use of this, I am of the view that the skilled addressee would be led to try IR communication between the first tool part 11 and second tool part 12 in the expectation that this would avoid known issues with physical communication ports as outlined at [11] of Drenth.
With regard to integer 1.13, I am not satisfied that the skilled addressee would be directly led to this integer for similar reasons as discussed with regard to D2.
In summary I am not satisfied that claim 1, nor any of the claims, lack inventive step over D1 when considered with the CGK.
D1 + D2 + CGK
It is clear, based on my discussion of D1 and D2 above, that a combination of D1 and D2, assuming one would be motivated to make such a combination, would still lack integers 1.7 and 1.13. Given my discussion of these integers in the context of D1 and D2, I fail to see how the skilled addressee would arrive at these features in a combination of D1 and D2 as a matter of routine.
In summary I am not satisfied that claim 1, nor any of the claims, lack inventive step over the combination of D1and D2 when considered with the CGK.
Support – s40(3)
The requirement that the claims be supported was introduced into the Act as part of the RTB reforms. Specifically, s40(3) reads as follows:
“(3) The claim or claims must be clear and succinct and supported by matter disclosed in the specification.”
In Encompass Perram J noted (at [170]) that with the insertion of the support requirement with the RTB legislation the previous requirement for fair basis was no longer relevant. Justice Perram, on considering the nature of support then quoted the following passage from the EM:
“‘[T]he terms ‘support’ and ‘full support’ pick up two concepts:
·there must be a basis in the description for each claim; and
·the scope of the claims must not be broader than is justified by the extent of the description, drawings or contributions to the art.’”
Other than this Justice Perram did not elaborate further on the nature of support.
The nature of support was also considered in CSR Building Products Limited v United States Gypsum Company [2015] APO 72 at [109] to [116], where the Delegate again considered caselaw from Europe and the UK relevant to the nature of support. After doing so the Delegate outlined a three-step test to determine whether the claims are supported at [115]:
“Thus the task is to:
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.”
Guidance on what is meant by “the technical contribution to the art” is apparent from CSR at [110] to [112]:
“110. In Generics Lord Walker quoted with approval from the decision of the Technical Board of Appeal in Exxon. The Technical Board stated, at page 659 – 660:
‘the claims must be supported by the description, in other words it is the description of the invention in the claims that needs support. In the Board's judgment, this requirement reflects the general legal principle that the extent of the patent monopoly, as defined by the claims, should correspond to the technical contribution to the art in order for it to be supported, or justified (see T 133/85, OJ EPO 1988, 441). This means that the definitions in the claims should essentially correspond to the scope of the invention as disclosed in the description. In other words, as was stated in decision T 26/81 (OJ EPO 1982, 211, point 4 of the reasons), the claims should not extend to subject-matter which, after reading the description, would still not be at the disposal of the person skilled in the art. Consequently, a technical feature which is described and highlighted in the description as being an essential feature of the invention, must also be a part of the independent claim or claims defining this invention’ (emphasis in the original)
111. The technical contribution to the art is a subtle concept that is not to be confused with the inventive concept that is often discussed in relation to inventive step. The distinction was explained by Lord Walker in Generics at [30]:
‘The expressions are certainly connected, but I do not think it is helpful (either in considering Lord Hoffmann's opinion, or generally) to treat them as having precisely the same meaning. “Inventive concept” is concerned with the identification of the core (or kernel, or essence) of the invention – the idea or principle, of more or less general application (see Kirin-Amgen [2005] RPC 9 paras 112-113) which entitles the inventor's achievement to be called inventive. The invention's technical contribution to the art is concerned with the evaluation of its inventive concept – how far forward has it carried the state of the art? The inventive concept and the technical contribution may command equal respect but that will not always be the case.’
112. In the same case Lord Neuberger of Abbotsbury described the technical contribution at [95] as:
‘in the context of a simple product claim such as the present (especially where the claim is to a single chemical product), the technical contribution is (at least in the absence of special factors) the product itself. As I have suggested, the technical contribution can often be equated with non‑obvious novelty – what is new to the art and not obvious is really another way of identifying the technical contribution.’”
I take the test and considerations of technical contribution from CSR to be congruent with the EM as cited by Justice Perram in Encompass. If further note that the approach in CSR was essentially endorsed in Merck Sharp & Dohme Corporation v Wyeth LLC (No 3) [2020] FCA 1477; 155 IPR 1 at [546].
It can be seen that the requirement for the claims to be supported by the technical contribution to the art includes within its ambit a requirement that the claims be enabled, in the sense understood under s40(2)(a), by subject matter in the description and drawings. This is due to the fact that a failure to do so would, in the parlance of Generics, result in the claim extending “…to subject-matter which, after reading the description, would still not be at the disposal of the person skilled in the art.” Hence a claim which is not enabled by the description is not supported by the technical contribution to the art and therefore lacks support under s40(3).
However, the support requirement is not a mere reiteration of s40(2)(a). The wording of s40(3) and the EM makes it apparent that the enabling disclosure requires consideration of the claims in isolation from the remainder of the specification – that is the enablement must come from the description and drawings. This contrasts with s40(2)(a) where the enabling disclosure comes from the entire specification.
The Opponent’s Support Arguments
The Opponent’s support arguments are not particularly detailed and appear to be rather ancillary (or perhaps auxiliary) to its inventive step arguments. The entirety of its arguments from [101] to [104] of its written submissions are given below:
“The Opponent’s case is that the claims of the Application are not inventive over the prior art and the CGK for the reasons outlined above. If that position is accepted, then the following ground of lack of support does not arise. If, however, the Applicants contend that the skilled addressee could not have arrived at the claimed invention due to insufficient information either in the CGK or in D1 and/or D2, then by parity of reasoning it would follow that the claims are not supported by matter disclosed in the specification and therefore do not comply with s 40(3) of the Act. The Application does not set out any technical specifications for the integers of the claims or provide a means for making them.
By way of example, Prof. Dupuis states at [81]-[82] of his declaration, in relation to integer 1.7, that:
‘[81] The window that is described, because of the requirement that it extends from the exterior surface, must be mounted radially. It must also be part of the sealing means that maintains the integrity of the sealed interior cavity.
[82] Given that windows are fragile in comparison to the materials used in the construction of pressure housings, someone skilled in the art would not have included this feature unless it was required to achieve another design goal. This integer teaches us that this additional design goal in this case is that it enables optical communication with the sealed interior cavity. Upon inspection, one skilled in the art would recognize that, if this window arrangement could be sealed it would allow the user to interact with electronic devices within the sealed interior cavity without having to manipulate any other portions of the core barrel head assembly. Thus while the inclusion of a radial window was not an obvious choice for someone skilled in art at the priority date, for cause of fragility and added manufacturing cost, the benefits of its inclusion are clear.’
The ‘window’ of integer 1.7 is not confined in any way, save that it must extend from the exterior surface into optical communication with the sealed interior cavity proximate the closed proximal end of the sealed interior cavity; and the specification provides no further information about how to manufacture or install the window or what materials it should be made of in order to, for example, address the fragility concern identified by Prof. Dupuis.
To the extent that it is suggested that a person skilled in the art would not readily know how to address any fragility and manufacturing challenges in including a window that extends from the exterior surface into optical communication with the sealed interior cavity, then the claims will necessarily lack support.”
It is by no means clear to me that the Applicant has contended that “…the skilled addressee could not have arrived at the claimed invention due to insufficient information either in the CGK or in D1 and/or D2”. In that regard it is not entirely clear to me what the Opponent means by insufficient information – it is the case that inventions that comprise an inventive step must involve the taking of a step which is non-routine, whereby information to do so must be lacking in the prior art and the CGK – for example every element of an invention may be CGK, and it may be entirely within the ability of the skilled addressee to put the combination together, yet the reasons for performing the combination eluded the skilled addressee. An applicant is not required to give an account of the journey that led to their invention.
Ms Evetts made similar submissions at the hearing, to the effect that if the invention was not lacking in inventive step, then it necessarily followed that the invention was wanting under s40(3). Ms Evetts made passing reference to the evidence of Professor Dupuis and Mr Reilly and specifically pointed to [24] of Drenth, in support of the Opponent’s position.
However, I fail to see anything in the evidence that necessarily supports the Opponent’s position on this. The evidence of Mr Reilly was said to establish the challenges of sealing the cavity for electronics, optics and power supplies. Ms Evetts did not supply specific references to Mr Reilly’s evidence on this point, so it is not clear which passages of his declaration(s) are meant. My own review of Mr Reilly’s declarations does not clearly reveal the “sealing challenges” suggested by the Opponent. Reilly2 at [28] points to potential sealing issues that could arise in connection with the check valve assembly, but these appear to be premised on poor maintenance or technique, rather than any difficulties with sealing per se. Indeed, if anything, both of Mr Reilly’s declarations suggest that being able to adequately seal componentry is well established in the art; see Reilly1 at [29] and [43] and Reilly2 at [33].
To the extent the Opponent is suggesting that the skilled addressee would not know how to create a window according to integer 1.7 using routine skill, based on Professor Dupuis’s evidence, I am of the view that this is overstated. In my view, Professor Dupuis’s evidence does not indicate that a window according to integer 1.7 is beyond the skilled addressee – rather he is saying that the inherent limitations of windows make them an unattractive choice for the skilled addressee within the context of integer 1.7. Notably, integer 1.7 does not specify the degree of sealing to be achieved via the window. Indeed, claim 5 appears to be something of an inherent acknowledgement of the limitations that such windows have. As also pointed out in the Applicant’s written submissions at [171], “…neither of the Opponent’s experts appeared to have any difficulty in identifying this feature [1.7] from the Application, and understanding what it meant or how it could be performed.”
In terms of Drenth at [24], I will discuss this below in connection with s60(3). Suffice to state here that, ultimately, I do not consider his evidence leads to any support issues for the specification.
For completeness, I note that I have considered the claims, and, to my mind, the technical contribution to the art based on a fair reading of the description resides in the use in combination of integers 1.7 and 1.13. To the extent this is not apparent from the preceding discussion, I fail to see any enablement issues with respect to these integers as defined in claim 1.
Support – Conclusion
I am not satisfied that any of the claims lack support. The Opponent has been unsuccessful in making out this ground of opposition.
Potential Issues under s60(3)
At the hearing I floated the possibility of raising matters of, potentially, best method and support under s60(3) based on certain aspects of Mr Drenth’s evidence, particularly [24] thereof. Mr Fox suggested that Drenth at [24] was merely provided as a general response to the EIS in terms of the design process not comprising matters of routine. Ms Evetts suggested that in the context of the application the steps concerned were quite specific and the application being silent as to the steps concerned led to support issues.
On further consideration of this evidence, I am of the view that it merely outlines in a general way aspects of the inventive design process used to achieve the invention, with the invention described and claimed representing the outcome thereof; that is, at best, it relates to the journey by which the invention was achieved, rather than indicating that critical aspects of the invention have been withheld or are not supported. Therefore, on balance, I do not consider it indicates that the Applicant has held back a better method of performing the invention or that the invention lacks support. Consequently I do not consider it necessary to raise any matters using the Commissioner’s powers under s60(3).
Conclusion
None of the grounds of opposition have been made out and therefore the opposition under s59 is unsuccessful.
Costs
Costs usually follow the event. I see no reason to do otherwise here. I award costs against the Opponent, Imdex Limited.
Dr W.E. Guinea
Delegate of the Commissioner of Patents
Annex A – Figures 11 to 13.
“[0088] In one exemplary aspect, for the embodiment shown in the flowchart in Figure 11, the core orientation can be validated when the following events have occurred: a) Step 200: detecting no vibration above a threshold by the core barrel head assembly, or is detected to be below a threshold, for the first predetermined delay time period; b) Step 220: taking a core orientation measurement during the first predetermined delay time period; c) Step 230: detecting noise from breaking the core from the subsurface body after the first predetermined delay time period and before the second predetermined delay time period; d) Step 240: detecting no vibration above a threshold by the core barrel head assembly, or is detected to be below a threshold, for the second predetermined delay time period; e) Step 250: retaining the orientation measurement obtained in Step 220 only if Steps 200, 230 and 240 are present; f) Step 260: disregarding detected signals or to not detect vibration or lack of vibration if only if Steps 200, 230 and 240 are obtained. If the detected signals are disregarded, a vibration silence signal in Step 280 must be detected before the core is broken.
[0089] Optionally, as shown in Step 270, a dip measurement can be obtained during the period of no drilling prior to breaking the core (period Y), preferably if dip is within the set limits.
[0090] In one aspect, once the required core orientation is obtained, the core barrel head assembly may be shut down or turned to low power standby mode in Step 290 in preparation to be subsequently placed into an orientation mode. Once the core barrel head assembly 30 is retrieved to the surface in Step 300, an operator can set the core barrel head assembly to the orientation mode in Step 310. In one example, and not meant to be limiting, this can be done via the remote communication means for communicating with the communication means of the core barrel head assembly in Step 320…
…[0092] Once the correct downside is identified in Step 330, the operator can again effect communication to the communication means of the core barrel head assembly via the remote communication device. In Step 340, and based on the orientation data recorded, the remote communication device can be configured to verify that the correct orientation was achieved. Subsequently, in Step 350, the operator can perform another orientation operation.”
Annex B - The Full Claim Set
0
2
6