Industrial Roll Formers Pty Limited v Matthew David McLaren
[2007] APO 38
•13 December 2007
ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No.2002248972 in the name of MATTHEW DAVID McLAREN
Title: Inserter and Cap
Action: Opposition under s59 by INDUSTRIAL ROLL FORMERS PTY LIMITED
Decision: Issued 13 December 2007
Abstract
The invention relates to a rock bolt adhesive cartridge inserter.
The application was opposed on the grounds of lack of utility, novelty and inventive step. In addition a number of matters under s40(2) and (3) were raised.
None of the grounds of opposition were successful and the opposition was dismissed with costs. However, in this case S104 amendments were filed after the evidence-in-support was completed. Therefore, costs are awarded against the patent applicant up to the date of filing of the S104 amendment and thereafter costs are awarded against the opponent.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 2002248972 by MATTHEW DAVID McLAREN and opposition thereto under S59 of Patents Act 1990 by INDUSTRIAL ROLL FORMERS PTY LIMITED.
BACKGROUND
Patent application 2002248972 which is the national phase application of WO 02/086290 was filed on 17 April 2002 by Matthew David McLaren (herein after called McLaren). It was advertised as accepted on 21 October 2004 and an opposition by Industrial Roll Formers Pty Limited (herein after called Roll Formers) was filed on 21 January 2005 with the statement of grounds and particulars being filed on 21 April 2005.
After a number of extensions, evidence-in-support was completed on 8 November 2005. A request to amend the specification under S104 was filed 3 March 2006 by McLaren and, after an adverse examiner’s report, a further set of amendments was proposed on 11 May 2006 and the amendments were accepted on 29 August 2006. In a letter dated 19 April 2007 McLaren indicated that he would not be filing any evidence-in-answer to the opposition.
The matter was set down for a hearing in Canberra on 10 July 2007. Richard McCormack, counsel, assisted by Errol Harwood of Wray & Associates attended on behalf of McLaren. Fraser Old, patent attorney of Fraser & Sohn attended on behalf of the Roll Formers.
NOTICE OF OPPOSITION
The application was opposed on the grounds of lack of utility, novelty and inventive step. In addition a number of matters under s40(2) and (3) were raised.
DECISION
The Specification
The present invention relates to the art of underground mining and specifically the invention relates to the installation of a rock bolt that is used in conjunction with a steel mesh for reinforcement of a mine tunnel roof. The rock bolt is installed by a chemical resin cartridge that fixes the rock bolt into the roof of the tunnel.
The first step in the process is the creation of a mine tunnel.
“…a mine tunnel is typically extended by the use of explosives for a length of approximately 3.5 metres. After the rock material has been dislodged by the explosive, it is removed by a machine known as a “bogger” which is a type of front-end loader having a loading arm which is of sufficient length to enable it to reach into the extended portion of the tunnel while the cabin portion of the vehicle remains in the portion of the tunnel which is protected. Once the rubble has been cleared it is then necessary to reinforce the roof of the newly extended portion of the mine tunnel by applying an appropriately sized steel mesh across the full area of roof of the extended portion of the mine.”
Background Art
The specification gives a detailed explanation of the process of installing a roof reinforcement.
“According to one of the current methods of roof reinforcement, the mesh is finally retained to the roof by a series of spaced support plates which are fixed to the roof of the tunnel and which engage the mesh to hold it against the roof. The plates are fixed to the roof of the tunnel by rock bolts which are known as “resin anchors” or “chemical bolts” and which require a hole to be drilled into the roof in order that they can be inserted into holes formed in the rock of the roof. Resin anchors comprise steel bolts which when in position are encased in an epoxy resin within a drill hole where the epoxy resin retains the steel bolt in position and protects the bolt from the corrosive influences within the drill hole. The epoxy resin is supplied in cylindrical cartridges which comprise both of the two components separated from each other by a barrier. In use the cartridges are inserted into holes drilled in the roof and the steel bolt is then inserted into the hole and though the cartridges. The insertion of the bolt through the cartridges causes the epoxy resin components to mix and react in order that it hardens whereby the steel bolts are retained in the hole retained by the epoxy resin which also serves to protect the bolts from the corrosive effects of water which may be present in the rock. To further enhance the mixing of the components the bolt is caused to rotate in the hole after insertion. Three types of epoxy having differing strengths and setting times are used.”
Generally, the method of fixing the mesh to the mine roof involves drilling of an appropriately dimensioned hole into which the “rock bolt” will be inserted.
“In order to install the resin anchors, it is necessary to first drill the hole which can typically have a diameter of the order of 32 mm and a length of the order of 2 metres. The holes are drilled by rock drills mounted on a vehicle known as a “jumbo” which comprises a vehicle the front of which supports two hydraulically driven, extendable and positionable arms each of which supports a “boom” which each accommodate a drill which is used to drill the holes for the resin anchors. The arms of the jumbo enable the holes to be drilled in the extended portion of the mine tunnel without the main part of the vehicle which incorporates the cabin in which the operator is seated, having to enter that extended portion. Once the holes have been drilled by the “jumbo”, the epoxy resin cartridges are manually inserted into hole by a mineworker accommodated within a protective cage supported from another vehicle which has a boom which can extend into the unprotected portion of the tunnel.”
Once the hole is drilled, a mineworker will need to manually insert the rock bolt. However, before a mine worker can enter the area, a temporary fix of the mesh has to be undertaken through the use of split-sets.
“However, as it is necessary to insert the epoxy resin manually, this would require the presence of a mineworker in the unprotected portion of the tunnel. Therefore for safety reasons it is necessary to temporarily fix the mesh to the roof to provide some protection for the mineworker who is required to insert the epoxy resin cartridges. The temporary installation of the mesh is achieved by first installing a series of “split sets”. A split set comprises a substantially tubular shaft of resilient metal having an enlarged one end and provided with a slit extending the length of the tubular shaft, thereby providing a shaft having a C-section. The split set is inserted remotely into a hole which has previously been drilled into the roof of the mine tunnel, by use of the boom of the “jumbo” whereby the split set is frictionally engaged in the hole by interference fit to provide suitable retention. The mesh is retained to the roof of the tunnel by metal plates, each of which is supported by the enlarged head of the split set. As a result mineworkers are able to then enter the extended portion of the tunnel to apply the resin anchors to the roof to provide permanent retention of the mesh to the roof. While the split sets provide a strong means of retaining the mesh to the roof, they are subjected to the corrosive effects of the water present in the rock and cannot be used as permanent fixings for the mesh.”
The object of the invention is to overcome the need to drill holes for the split sets; insert the split sets and manually inset the “rock bolt”. To this end, the specification provides as a solution a rock bolt inserter comprising, inter alia, a tube and retention means. The specification describes eleven embodiments to the retention means which is further described as a cap. The specification ends with 23 claims with one independent claim directed to a rock bolt adhesive cartridge. A further interdependent claim defines a method of installing the rock bolt.
Claims
As noted above, the claims under opposition are those that were amended under the S104 action. Claims 1 to 21 relate to a rock bolt adhesive cartridge inserter while claims 22, 23 relate to a method for installing an adhesive cartridge into a rock bolt hole. These claims are as follow:
“1. A rock bolt adhesive cartridge inserter intended in use to enable insertion of a cartridge into a rock bolt hole drilled in a rock wall, said inserter comprising a tube and a retention means, the tube having an opening at each end, the tube having an external diameter to enable the inserter to be closely received in the rock bolt hole, the internal diameter of the tube dimensioned to slidably receive a cartridge with one end of the cartridge located proximate one end, the other end being configured to in use to be able to be fixed to a support such that the tube is rigidly supported from the support, the tube having a length at least equal to the depth of the rock bolt hole and the retention means configured to be engagable over the end of the cartridge proximate the one end of the tube to grip the end of the cartridge, the retention means being further configured to be supported by the one end of the tube and to be closely received in the rock bolt hole, the retention means having a fixing means configured and arranged to engage with the wall of the rock bolt hole to enable movement of the retention means into the rock bolt hole but to resist movement of the retention means and cartridge from the rock bolt hole.
2. A cartridge inserter as claimed at claims 1 wherein the one end of the tube is of a reduced external diameter.
3. A cartridge inserter as claimed in any one of the preceding claims wherein the internal bore of the tube is of substantially constant diameter throughout its length.
4. A cartridge inserter as claimed in any one of the preceding claims wherein the tube is variable in length.
5. A cartridge inserter as claimed in claim 4 wherein the tube comprises a plurality of lengths of tube which can be interconnected in an end-to-end relationship In various combinations to form Inserters of different lengths.
6. A cartridge inserter as claimed in claim 4 wherein the tube comprises a plurality of lengths of tube which are telescopically interconnected and which can be selectively locked together to provide an inserter of a desired length.
7. A cartridge inserter as claimed in any one of claims I to 6 wherein said retention means is provided with a central portion configured to be receivable over the end of the cartridge and in use to be located adjacent the one end of the tube.
8. A cartridge inserter as claimed in claim 7 wherein the fixing means comprises at least one formation around the central portion, the formation being deformable to be able to increase the lateral dimensions of the retention means to that of the rock bolt hole whereby the formation will engage the wall of the rock bolt hole to prevent said movement of the retention means and cartridge from the rock bolt hole.
9. A cartridge inserter as claimed in claim 8 wherein the formation is deformable to be displaceable in a radial direction to thereby engage the wall of the hole to prevent movement of the retention means and cartridge from the rock bolt hole.
10. A cartridge inserter as claimed in claim 7 or 8 wherein the formation comprises a plurality of elements.
11. A cartridge inserter as claimed in claim 10 wherein the elements are displaceable between a position closely adjacent to the exterior of the tube to allow insertion of the tube containing the cartridge and retention means into the rock bolt hole and an outwardly extending position at which the elements engage the walls of the rock bolt hole to prevent said movement of the retention means and cartridge from the hole.
12. A cartridge inserter as claimed in any one of claims I to 11 wherein the retention means comprises a cap which is configured to enclose the end of the cartridge proximate the one end of the tube, the cap having an inner end receivable in the one end of the tube.
13. A cartridge inserter as claimed in claim 12 as dependent from any one of claims 7 to 11 wherein the central portion has a tubular first portion which is configured to be received in the one end of the tube and a part-conical second portion which in use Is to extend from the one end of the tube.
14. A cartridge inserter as claimed in claim 13 wherein the formation comprises an extension of the second portion proximate the junction of the second portion with the first portion.
15. A cartridge inserter as claimed in claim 14 wherein the formation comprises a skirt-like extension of the second portion.
16. A cartridge inserter as claimed in claim 15 wherein the skirt-like extension is substantially continuous around the second portion.
17. A cartridge inserter as claimed in claim 15 wherein the skirt-like extension is substantially discontinuous around the second portion.
18. A cartridge inserter as claimed in at any one of claims 12 to 17 wherein the outer axial end of the cap is open the interior of the cap.
19. A cartridge inserter as claimed in claim 18 wherein the open end of the cap is configured to engage the end of the cartridge.
20. A cartridge inserter as claimed in any one of the preceding claims wherein the support comprises the shank of a “jumbo” and wherein in use the “jumbo” is able to locate support such that the one end of the tube is located at the entry of the rock bolt hole with the tube aligned with the rock bolt hole, and then insert and withdraw the tube into and from the rock bolt hole.
21. A cartridge inserter substantially as herein described with reference to the accompanying drawings.
22. A method for installing an adhesive cartridge into a rock bolt hole by the use of a cartridge inserter as defined in any one of the preceding claims the method comprising the steps of:
drilling a rock bolt hole;
locating the retention means onto one end of an adhesive cartridge;
locating the cartridge within the tube such that the retention means abuts the one end of the tube;
fixing the other end of the tube onto the support;
by movement of the support inserting the inserter into the hole to cause the
retention means to be inserted to the desired depth within the hole; and
withdrawing the inserter from the hole whereby the retention means and
adhesive cartridge are retained within the hole.23. A method for installing an adhesive cartridge into a rock bolt hole as herein described.”
For comparison purposes, the independent claim 1 as accepted is as follows:
“1 A cartridge inserter in use adapted for insertion of a cartridge into a rock bolt hole drilled in rock, said inserter comprising a tube portion having an opening at one end which opens into the interior of a tube portion, the interior region of the tube portion being adapted to receive a cartridge, the tube portion being configured, in use to be partially inserted within a rock bolt hole to insert the cartridge and to thereafter be removed whereby the cartridge is retained within the hole by retention means.”
“22. A method for installing a cartridge into a rock bolt hole by use of a cartridge inserter of the form as described in any one of claims 1 to 21, the method comprising the steps of:
drilling a hole;
locating a cartridge in the tube portion of a cartridge inserter through the one end;
inserting the inserter into the hole to cause the outer end of the cartridge to be restrained in the hole;
withdrawing the inserter from the hole whereby the cartridge is retained within the hole by retention means.”
It is readily apparent that the claims have been substantively amended.
The Evidence
A previously noted, the evidence in this opposition consisted solely of the evidence-in-support. This evidence consisted of the following declarations and exhibits:
a)A statutory declaration dated 14 July 2005 from David Fergusson (herein after called the first Fergusson declaration), a director of Roll Formers. This declaration was accompanied with an exhibit DF1 which is a photocopy of page E3.1 from September 1999 collection of data sheets from Australian National Industries (ANI) which is stated to form part of the Dywidag Systems International (DSI) group of companies.
b)A second statutory declaration dated 21 October 2005 by David Fergusson (hereinafter called the second Fergusson declaration). This declaration was accompanied with exhibit DF2 containing a copy of patent application WO 96/07015 by Roll Formers, and DF3 a copy of a recent download from the McLarens website explaining the nature of the JUMPBOLT, its installation procedures and the nature of the resin cartridge.
c)A further declaration dated 21 October 2005 by Matthew Watts who was a Regional Support manager for Strata Control Systems Pty Ltd during 1998-1999. In his declaration, Mr Watts records the observation he made at the Ridgeway Copper and Gold Mine located at Orange, NSW.
Submissions
During the opening remarks, Roll Formers referred to McLaren’s divisional patent application 2004216586 which was advertised as accepted on 19 May 2005 and subsequently granted. The application was unopposed and I was invited to draw an adverse implication from this fact. However, as pointed out by McLaren, the claims of the divisional application were directed to the cap per se and not to the claimed combination that is the subject matter for this opposition. Consequently, I agree that no adverse implication can be drawn from the lack of an opposition to the now sealed divisional patent.
The substantive issues discussed at the hearing revolved around claim construction issues for claims 1 and 22. In particular, Roll Formers in their submissions focussed on the broadest form of the invention which is illustrated in figures 1 to 3.
Section 40 issues
Roll Formers submitted that in claim 1 the tube which is open at both ends is defined in terms of its intended use, that the tube is of a dimension to be closely received in the rock bolt hole and has a length at least equal to the length of the rock bolt hole. Roll Formers submitted that:
“[A] merchant with an inserter is not certain whether his inserter falls within the scope of the claim, or not, because he does not know if the length of the tube is at least equal to the depth of the hole. Such a merchant also does not know if the external diameter of the tube enables it to be closely received in the hole.”
Roll Formers argues that this level of uncertainty was unacceptable and “generally inconvenient” to a merchant. My view is that, while specific dimensions are not referred to in the claims, it is something that I would consider to be inherent to a skilled person in the art. I disagree that this leads to the degree of uncertainty that Roll Formers suggests.
Roll Formers further submitted that a claim cannot have an intention and that the tube per se is, simply in fact, directed to the tube suitable for use in a specific environment and that there is nothing noteworthy about the diameter of the tube or its length. Hence, Roll Formers argued that there would be no difficulty for a skilled person in the art in manufacturing such a suitable tube.
In regard to this submission, I would regard “intention” as equivalent to the patent law concept of “purpose”. It is well known that purpose per se does not provide invention.
“It is not permissible to claim an article which, as an article, requires no inventive ingenuity merely because, if used in a particular way, it will be useful in achieving a particular purpose.”(Mullard Radio Valve Co. Ltd. V. British Belmont Radio Ltd. and Juviler (1939) 56 RPC 1 at page 15.)
However, in this case, the claims are not directed to the use of a length of piping for achieving a particular purpose. The claims are directed to a combination of tube and retention means which can be used in a specific environment. Consequently, I do not agree with Roll Formers on this point.
In relation to the tube, Roll Formers further submitted that the tube defined in the claim need not be rigid. This issue raises the principle of purposive construction. Sheppard J summarised the rules of construction for a patent specification in Décor Corp v Dart Industries 13 IPR 385 at 400. This summary has been referred to in numerous subsequent judgements, and was endorsed by the Full Federal Court in Pfizer Overseas Pharmaceuticals v Eli Lilly [2005] FCAFC 224. One of the rules of particular import is the rule that “a patent specification should be given a purposive construction rather than a purely literal one”.
Claim 1 defines that one end of the tube is configured, in use, to be able to be fixed to a support such that the tube is rigidly supported from the support. At the very least, the claim requires the rigidity to be present when the tube is supported which thereby determines the tube’s functional requirement. Consequently, I do not believe that the claim lacks definition in regard to the rigidity of the tube and that a purposive construction of the claim leads to the conclusion that the required rigidity is present. Therefore, the claims satisfy the definition requirement of S40(2)(b).
Fair basis
The test for fair basis is simply whether the claims are consistent with what the specification as a whole describes as the invention. From the authorities of Kimberly-Clark Australia Pty v Arico Trading International Pty Ltd [2001] HCA 8 at 21 and Lockwood v Doric [2004] HCA 58, the “invention” for the purposes of section 40 is not the inventive step or the technical contribution made by the inventor but rather the “embodiment around which the claims are drawn”.
As noted by the High Court in Kimberly-Clark v Arico (at paragraph 12), the general principle underlying fair basis is:
“... where the issue is one under a 40(3) of "fair basing" of a claim, what the 1990 Act requires is a comparison between the matter described in the specification and the claim which defines the scope of the monopoly.”
In order for a claim to be fairly based, the claims must be consistent with what the specification as a whole describes as the invention. As a consequence, fair basis does not call for any evaluation of whether the breadth of the claims exceeds "the technical contribution to the art embodied in the invention". It also does not entail any consideration of whether it is a "patentable invention" under any of the criteria of s.18 nor any inquiry into "inventive step" or inventive "merit".
Roll Formers submitted that a technical person would not have any difficulty in manufacturing the tube of the inserter and therefore the claims could not be fairly based as they included within their scope an embodiment that lacked novelty. However, as discussed by the authorities above, this is not the question that underpins the requirement of fair basis. Consequently, the claims are fairly based.
Utility
There was a further submission that the claims were not useful; i.e. they lacked utility because they included embodiments in which the stated purpose was not met. This argument was based upon the concept that the claims included the construction in which the tube was not rigid. I have already commented upon this fact and concluded that the functional requirement of rigidity of the tube is met. I would also note that as the claims include within the perimeters of their scope the stated purpose or function, it is difficult to see how the question of utility would be relevant as the nexus between the cartridge inserter and its function is defined in the claim.
Thus, the issue of utility is not relevant.
Novelty
The test for determining whether an invention lacks novelty is the "reverse infringement test" as set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd, (1977) CLR 228 at page 235 (see also 13 ALR 605 at page 611), where Aickin J stated:
"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement."
Infringement of a claim occurs where "each and every one of the essential integers" of that claim have been taken: See e.g. Rodi and Wienenberger AG v Henry Showell Ltd, (1969) RPC 367 at page 391.
Roll Formers alleged that the invention as defined by at least claims 1 and 22 is not novel in view of the following documents, taken separately: ANI chemical installer, the Watt PVC installer and the JUMPBOLT. In the alternate, Roll Formers alleged that the claims of the application do not possess an inventive step in view of the ANI inserter and the Watts PVC as the latter solve “the same problem the same way.”
ANI Chemical Installer
Annexure DF1 details the ANI Chemical Installer. It is a one page document. The first Fergusson declaration stated that the device has a hand grip at one end of a shaft and at the other end a tube which slides over a shaft and the tube diameter is slightly larger than the shaft diameter.
The exhibited page is entitled “Chemical anchor installer” and is given a code “PLCHINST” which the first Fergusson declaration suggested means “plastic chemical installer”. There is an outline of the installer where some structural features are evident. There is also some text describing the installer and this is reproduced below.
“The chemical anchor installer is to assist in the manual installation of chemical anchors in pre-drilled rock and roof bolt hole when the roof height is up to 3.5 meters high.
The chemical anchor installer is also used with and accepts foam plastic cubes (product code “FOAMCUBE) or plastic ‘top hats’ (product code “PLASHAT) for physical retention of the placed anchors.
The chemical anchor installer is light in weight but robust being manufactured from rigid PVC conduit.” [underlining my emphasis]
The exhibit stated that it was printed September 1999 which predates the earliest priority date of the application of 20 April 2001.
The first Fergusson declaration stated that;
“The end of the device opposite the handle is able to accommodate a sausage like chemical anchor. This end is inserted into the hole drilled in the rock or mine roof to be bolted. By sliding the shaft relative to the tube, the ‘sausage’ is able to be ejected and thereby placed in the hole. This action takes place before the bolt is inserted into the hole.”
In use, the cartridge is manually inserted and a plastic cube or plastic top hat is used to retain the cartridge when the inserter is withdrawn. A bolt would then be inserted which would rupture the cartridge and the resin would set. I note that no evidence of the plastic cube or top hat was filed in this opposition. However, the first Fergusson declaration makes statements to the effect that the top hat performs the same function as a spider or cap of the invention.
The submission from Roll Formers was, in effect, directed to a documentary disclosure of the tube which when read in the light of the common general knowledge of “top hats” meant that, at least, claim 1 lacked novelty.
Claim 1 is directed to a combination of tube and inserter. The first issue is whether the scope of claim 1 includes a manual inserter (compare with claim 20 where the support comprises the “shank” of a “jumbo”). However, the tube must be capable of being fixed to a support and being rigidly supported thereto. In my view, this precludes manual insertion.
The second issue is whether the “top hats” were common general knowledge in the art of manual insertion. At this point the evidence of both Mr Fergusson (the first declaration) and Watts is relevant. The first Fergusson declaration describes in clauses 6 to 8 thereof the use of a “cable tie, top hat, explosive spider, or similar”. The purpose of the cable tie, top hat or spider was twofold; to prevent the cartridge from sliding all the way into the tube and to retain the cartridge by frictional engagement with the bore of the hole when the tube was withdrawn. Mr Watts makes a similar statement but only refers to cable ties and explosive spiders. The drawing, exhibit AA1 to Mr Watt’s declaration, shows a cable tie secured around the middle of a cartridge with the cartridge been inserted by a length of PVC tubing which was affixed to a drilling rig.
I would consider both declarants skilled in the art but support for their statements is scant. In relation to reading the ANI chemical installer in light of common general knowledge it is not apparent that “top hats” formed part of the common general knowledge in the art. Consequently, as I am unable to find that “top hats” were common general knowledge in the art of manual insertion of cartridges into drilled holes, I am unable to read the ANI inserter in its light.
The third issue is whether the other function requirements of the features in the claim are met by the disclosure. In my view they do not. The configuration of the retention means which is engageable over the end of the cartridge, and the functionality of the retention means during insertion and withdrawal are not present in the ANI document.
Consequently, for the reasons specified above, the claims are novel over the disclosures of the ANI inserter.
Watt PVC installer
The Watts declaration states that the resin cartridge is inserted into the end of a length of PVC tubing which is mounted on one of the arms of a drilling jig. Exhibit AA1 indicates that the inserter is inserted by some sort of device with a cable tie being shown at about the mid point of the cartridge. The Watts declaration explains the twofold reason for the use of a cable tie or explosive spider to support the cartridge on the end of the PVC tube and to retain the cartridge within the bolt hole when the PVC tubing is removed. I note that the first Fergusson declaration also refers to the use of cable ties. I further note that there is no evidence that the observations of Roll Former declarants are mistaken. Consequently, I believe that this evidence is probative and relevant to this opposition.
However, I am not convinced that the cable tie (or the explosive cartridge) fulfilled the stated functions defined in claim 1. In particular claim 1 requires that “the retention means is engageable over the end of the cartridge proximate the one end of the tube to grip the end of the cartridge”. [underlying my emphasis] The cable tie is not engageable over the end of the cartridge, it is not located proximate the end of the tube and it does not grip the end of the cartridge. Further, claim 1 requires that “the retention means being further configured to be supported by the one end of the tube and to be closely received in the rock bolt hole, the retention means having a fixing means configured and arranged to engage with the wall of the rock bolt hole to enable movement of the retention means into the rock bolt hole but to resist movement of the retention means and cartridge from the rock bolt hole.” [underlining my emphasis] The cable tie is not supported by one end of the tube, it does not possess fixing means that allows movement of the retention means into the hole and resistance to movement of the retention means from the rock hole.
Roll Formers submitted that the method of installation as defined in claims 22 and 23 was precisely the same method that was described in the Watts declaration. Claims 22 and 23 are appended claims. They refer to the method of installing the adhesive cartridge using the cartridge installer of claim 1. However as the Watt PVC installer fails to disclose all of the features of the cartridge installer, claims 22 and 23 are novel.
The JUMPBOLT
This is a reference to WO 9607015 A (ROLL FORMERS PTY LIMITED) 7 March 1996 which discloses the JUMPBOLT and the Roll Formers website which describes the operation of the JUMPBOLT.
Roll Formers brought my attention to the embodiment illustrated in figures 4, 6A and 6B which discloses the use of a sleeve (20) which is fitted onto the end of the rock bolt. The purpose of the sleeve (2) is to removably retain the cartridge (4) prior to its rupture.
“The sleeve 20 is formed of a resilient material which allows one end 2 thereof to be fitted on an end of the bolt and has an open end 21 for receiving and holding the cartridge 4.” The sleeve is concertinaed with the ribs 24 running parallel with the axis of the tubular bolt thereby allowing the sleeve to expand to the diameter of the bolt when expanded and hold the smaller diameter cartridge when contracted. The sleeve 20 also preferably has a flange 23 which is adapted to engage the rock face 12 when the bolt is inserted in hole 9 such that further insertion of the bolt causes the bolt to pass through the sleeve 20 whereby the cartridge is carried forward by the front end of the bolt.”
Roll Formers submitted that the leading edge of the sleeve is approximately equal to the cartridge diameter and its trailing edge is affixed to the bolt which in turn is affixed to the JUMBO or drilling rig. Thus it was argued that the trailing end of the sleeve is “configured in use to be able to be fixed to a support”.
While the submission appears to be initially attractive, the features of the inserter as defined and the sleeve depart in a number of critical aspects. The inserter of the claimed invention comprises a tube and a retention means with the retention means having “a fixing means configured and arranged to engage with the wall of the rock bolt hole to enable movement of the retention means into the rock bolt hole but to resist movement of the retention means and cartridge from the rock bolt hole.” There is no corresponding feature apparent in the sleeve of the citation. I also have considerable doubts about whether there is any disclosure of the retention means in the citation that is “configured to be supported by the one end of the tube and to be closely received in the rock bolt hole.” Furthermore, there is no disclosure in the citation that the sleeve has a “length at least equal to the depth of the rock bolt hole”.
Consequently, the claims are novel over this reference.
Inventive Step
Section 7 of the Patent Act 1990 provides that:
(2) 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 in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).
The information for the purposes of subsection (2) is:
(a) any single piece of prior art information; or
(b) a combination of any 2 or more pieces of prior art information;
being information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded as relevant and, in the case of information mentioned in paragraph (b), combined as mentioned in that paragraph.
While two pieces of prior art have been provided, the ANI Chemical Installer and the JUMPBOLT, evidence of common general knowledge is limited to the comments provided in the first Fergusson declaration at clauses 6 to 8 and in the Watts declaration at clauses 4 to 7 thereof in relation to the use of cable ties and spiders.
While I agree that the ANI Chemical Installer and the JUMPBOLT are pieces of prior art information that could be reasonably expected to have been ascertained, understood and regarded as relevant, the use of the alleged common general knowledge of cable ties and spiders with these documents in arriving at a lack of inventive step seems, to me, to be remote. In order to accommodate the cable tie or spider, it appears to me that the features of the above cited prior art would need to be altered or modified in some fundamental way and in doing so the skilled person is no longer non-inventive.
Consequently, the claims possess an inventive step.
CONCLUSION
I have found that none of the grounds of opposition are made out.
COSTS
As usual in these proceedings costs follow the event. However, in this case S104 amendments were filed after the evidence-in-support was completed. Therefore, costs are awarded against McLaren up to the date of filing of the S104 amendment and thereafter costs are awarded against the opponent, Roll Formers. Costs are to be assessed in accordance with Schedule 8 of the Patents Regulations 1990.
G.M.COX
Delegate of the Commissioner of Patents
13 December 2007
Patent attorneys for the applicant : Wray & Associates, Perth
Patent attorneys for the opponent : Fraser Old & Sohn, Sydney
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