Jenmar Australia Pty Ltd v DYWIDAG-Systems International Pty. Limited - [2004] APO 18

OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : Nos. 722243 in the name of DYWIDAG- Systems International Pty. Limited

Title: Cable Bolt

Action: Opposition under S59 by Jennmar Australia Pty Ltd

Decision: Issued 13 July 2004.
Abstract

The invention as claimed in claim 1, if construed using a plain meaning approach, would render several dependent claims nonsensical. Therefore a broad non-intuitive construction of the claim was required if one was willing and wishing to make sense of these dependent claims.
As a consequence, the independent claim was considered to lack novelty in the light of the prior art raised by the opponent.
Given the problem to be solved in ameliorating prior art disadvantages, the claimed invention with its broadest interpretation also lacks an inventive step. However, if one were to interpret claim 1 such that it reflects an embodiment of the invention, which ignores said dependent claims, this was found to be an inventive solution to the problem.
The independent claim lacks fair basis, as there is no real and reasonably clear disclosure of matter, which reasonably falls within the scope of the claim, given the construction required.
The invention claimed was considered to satisfy the threshold of inventiveness required, and as such contains patentable subject matter.
Therefore the applicant was given 60 days from the date of this decision to amend the specification.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re: Patent Application No. 722243 by of DYWIDAG- Systems International Pty. Limited, and opposition thereto by Jennmar Australia Pty Ltd under S59 of the Patents Act 1990.
BACKGROUND

Patent application 722243 in the name of THE ANI CORPORATION LIMITED was filed 11 January 1999. The application was advertised accepted 27 July 2000, and the ownership of the application amended to DYWIDAG-Systems International Pty. Limited ("DSI") on 26 October 2001. Jennmar Australia Pty Ltd ("Jennmar") filed a notice of opposition on 26 October 2000 and completed service of its evidence-in-support on 16 August 2001 following two extensions. On 16 April 2002 DSI completed its evidence-in-answer, also after two extensions.
Evidence-in-reply was consequently due on 16 July 2002. However, after several earlier extensions of time, and a partial serving of evidence-in-reply on 1 November 2002, Jennmar sought a further extension of time. This was duly opposed by DSI and the matter heard on 20 August 2003. In the light of a closely related petty patent, 738529, being set for a hearing on 16 September 2003, a Ferochem type extension was granted resulting in the evidence-in-reply being completed 11 September 2003.
Leave was sought by, and granted to DSI to serve further evidence, which was duly served 22 October 2003.
The present matter was heard in Canberra on 17 February 2004. DSI was represented by Mr Greg Gurr, patent attorney of Spruson & Ferguson, whilst Jennmar was represented by Ms Linda King, solicitor of Baldwin Shelston Waters Law and Ms Caroline Bommer, patent attorney of Baldwin Sheltson Waters.
GROUNDS OF OPPOSITION
The grounds for opposition submitted by the opponent were that the invention is not a patentable invention because it does not comply with paragraph 18(1)(a) or (b), specifically that the invention as claimed is not for a manner of new manufacture, lacks novelty and an inventive step. It was also alleged that the specification filed in respect of the complete application does not comply with subsection 40(2) or 40(3), and in particular the claims are unclear and lack fair basis on the matter described in the description.
On 16 February, one day prior to the commencement of the hearing, the opponent requested an amendment of the statement of grounds and particulars. In essence, this was to formally particularise certain material previously referred to in general terms, and addressed in the evidence-in-reply served on the applicant on 11 September 2003. I shall determine the allowability of this amendment to the statement of grounds and particulars in my decision below.
EVIDENCE
Evidence in Support consisted of declarations made by:
· Mick WILKES, dated 13 August 2001. Mr Wilkes states he is the National Sales Manager for Jennmar, having joined the company in 1998. He further states he has over 30 years experience in underground mining and roof control, having worked both in the UK and since 1983 in Australia. The declaration includes Annexures MW-1 to MW-10.
· Brian McCOWAN, dated 9 August 2001. Mr. McCowan states he has had over 24 years experience in underground mining in the areas of operations, research and consulting. He further states that during this time he has specialised in the area of ground control and the feasibility and implementation of new mining systems. Mr. McCowan has a Bachelor of Science Degree in Geology and a Graduate Diploma in Mining. Mr. McCowan, since 1998 has been the Principal Consultant in McCowan Consulting, a geotechnical and mining consultancy. The declaration includes Annexures BM-1 to BM-8.
Evidence-in-Answer consisted of declarations made by:
· Mieczyslaw Stanislaw RATAJ dated 14 February 2002. Mr. Rataj states he has 24 years experience in mining related fields in Poland, South Africa and Australia, specialising in ground reinforcement products. Mr. Rataj further states he has been involved in the mining industry in Australia since 1998 and is currently the Research Development Manager for DSI. Mr. Rataj holds a Masters of Science (Mining Engineering) degree from the University of Mining and Metallurgy, Cracow, Poland. Mr. Rataj is also the inventor of the cable described in this patent application. The declaration includes exhibits MSR-1 to MSR-5.

Mr. Rataj also submitted a supplementary declaration on 21 February 2002 to correct some minor errors in respect of his 14 February 2002 declaration.
· Peter FULLER, dated 19 February 2002. Mr. Fuller states he has 29 years experience in geotechnical and ground control aspects of both underground and open cut mines in Australia, and in particular has been involved in the field of rock bolting of mine roofs since the early 1970's. Mr. Fuller is currently the managing director and principal consultant of BFP Consultants Pty Ltd., and holds Bachelor of Engineering and Doctor of Philosophy (Materials Engineering) degrees. The declaration includes exhibits PF-1 to PF-3.
Evidence-in-Reply consisted of declarations made by:
·    Brian McCOWAN dated 9 August 2002, together with Exhibits BM-A to BM-F
·    Mick WILKES dated 12 August 2002, together with Exhibits MW-A to MW-C;
·    Brian McCOWAN, dated 30 October 2002;
·    Mick WILKES, dated 30 October 2002, together with Exhibit MW-(i);
·    Caroline Maria BOMMER, dated 1 November 2002, together with Exhibit CMB-1. Ms Bommer is a registered patent attorney from Baldwin Shelston Waters representing the opponent.
·    Brian McCOWAN dated 10 September 2003;
·    Mick WILKES dated 10 September 2003.
Further Evidence in response to evidence-in-reply, consisted of declarations by:
· Mieczyslaw Stanislaw RATAJ, executed 17 February 2003 in relation to Australian Petty Patent No. 738529, together with Exhibits MR-A and MR-B;
· Peter FULLER, executed 17 February 2003 in relation to Australian Petty Patent No. 738529, together with Exhibit PF-A.
AMENDMENT TO THE STATEMENT OF GROUNDS AND PARTICULARS
The relevant rules dealing with amending the statement of Grounds and Particulars are set out in Reg. 5.9. In particular I believe regulation (1)(c) is applicable. It reads:
"Subject to sub-regulation (2), the Commissioner, on the written request of an opponent and subject to such terms as the Commissioner may specify:
…must amend particulars relating to a ground set out in a statement that is served and filed under regulation 5.4."
The specific amendments sought by the opponent particularise material previously referred to in general terms, and which is addressed in the evidence-in-reply, served on the applicant on 11 September 2003. The applicant was clearly aware of the material raised as it filed further evidence on 23 October 2003 to counter this material, and addressed the material in its submissions made at the hearing.
Therefore, in line with sub-regulation 5.9(2)(d), I reasonably believe the applicant has been notified of the proposed amendment. Nor should the material introduced by the amendment be any surprise to the applicant given this material formed part of the evidence-in-reply. The applicant at the hearing made no representations concerning the proposed amendment.
Therefore I believe the proposed amendment is merely bringing known information into line with other information already known to the applicant. Consequently I allow the amendment to the statement of grounds and particulars as requested by the opponent.
THE SPECIFICATION
The present invention relates to cable bolts and their method of installation. More particularly the specification describes the invention as relating to a cable bolt having an attachment extending from one end thereof, which attachment is adapted to be engaged by a tool used for turning the cable bolt for mixing resin in a borehole of a rock formation.
Cable bolts traditionally have been installed in a rock formation by cement grouting. In this method, the cable is pushed into a pre-drilled hole and the cement grout is pumped into the hole to anchor the cable. Newer systems include a resin cartridge containing two components, of which one is a hardener, which is inserted into the pre-drilled hole in the rock formation prior to insertion of the cable bolt. Forcing the cable into the borehole while simultaneously rotating the cable ruptures the resin cartridge and mixes the resin components within the annulus between the bolt and the borehole.
The specification states in order to rotate a cable for resin mixing, some attachment is required to engage the cable with a rotating tool such as a spanner.
It is stated prior art methods for effecting rotation include employing a special fitting having a hexagonal barrel and a plug. The barrel has an internally tapered funnel-shaped bore there through and a tapered plug having a frusto-conical outer surface that engages the funnel-shaped inner surface of the drive barrel. The tapered plug has an internal bore concentric with the outer frusto-conical surface and fits over the cable. The hexagonal head drive barrel provides a rigid head for the cable bolt allowing engagement by a spanner.
Another prior art method described in the specification includes coupling the cable with a rotating tool. Again a barrel and plug arrangement as described above is used, although the end portions of the plug member extend out of the barrel. These protrusions, being of square or hexagonal shape, engage with a rotating spanner.
A final prior art method described in the specification for rotating a cable bolt in order to mix resin includes the cable being threaded and a standard nut screwed on much the same way a nut is threadably engaged with a solid bolt.
The specification states all of the above described methods are relatively expensive due to the requirement of machining of the hexagonal shaped barrel or plug segments with special protrusions or threading of the cable. The specification further states it is an object of the present invention to overcome or substantially ameliorate at least one of the above disadvantages.
The specification describes two categories of preferred embodiments of the invention. The first describes a cable bolt having a non-circular attachment welded to one end of the cable and the second describes a cable bolt having a slanted surface formed at one end of the cable. These embodiments are reflected in figures 1 and 2 respectively.
The claims defining the present invention are as follows:
"1.       A cable bolt having a cable with a longitudinal axis, said cable bolt being provided with an engagement means at one end of said cable, said engagement means defining an engagement face for engagement with a tool to effect rotation of said cable bolt about said axis, wherein said engagement means does not protrude laterally beyond said cable at one end.
2.        The cable bolt of claim 1, wherein said engagement means is in the form of an attachment having a non-circular cross-section, said attachment being welded to said one end of said cable and defining a plurality of said engagement faces.
3.        The cable bolt of claim 2, wherein said attachment has a square cross section defining four said engagement faces.
4.        The cable bolt of claim 2, wherein said attachment has a hexagonal cross section defining six said engagement faces.
5.        The cable bolt of claim 1, wherein the engagement means is a slanted end of the cable defining said engagement face, for mating with a matching surface in a recess of the tool.
6.        The cable bolt of claim 5, wherein said slanted end is reinforced by welding.
7.        The cable bolt of claim 5, wherein said slanted end extends at an angle in the range of 30^o to 60^o from said longitudinal axis of said cable.
8.         A cable bolt, substantially as hereinbefore described with reference to either of the accompanying drawings."
DECISION
Essential Features
Before continuing any further, I will set out what I consider the essential features of the claimed invention to be. In establishing the essential features I am directed by the following passage in Catnic Components v Hill & Smith [1982] RPC 183:
"A feature can be regarded as not essential if it does not have a material effect on the way in which the invention works. However, claims are to be given a purposive construction and initially it is to be assumed that all features of independent claims are essential."
Initially concentrating on claim 1, I believe this claim may be broken down into the following essential features on applying Catnic Components (supra):
A cable bolt having:
(a)    a cable with a longitudinal axis;
(b)   said cable bolt being provided with an engagement means at one end of said cable;
i.the engagement means defining an engagement face capable of engagement with a tool to effect rotation of the cable bolt about the longitudinal axis;
ii.the engagement means does not protrude laterally beyond the cable at said one end.
In reaching this position, I am faced with determining the scope of the meaning conferred by these words. Both sides made submissions on this point, in particular, whether or not a length of cable per se constitutes a cable bolt.
To that end, the opponent's independent declarant, Brian McCowan, in his 9 August 2001 declaration, at paragraph 10 states:
"…I would consider any length of cable to come within the wording of claim 1… Any length of cable is by its nature, capable of being rotated by gripping the outer surface of the cable adjacent one end. In this manner, the outer surface of the cable is the engagement means."
In addressing this issue, the applicant first directed me to Henriksen & Tallon (1965) RPC 434 and EMI v Lissen 56 RPC 23. These cases set out the view that when a claim is capable of more than one construction an absurd construction should be rejected in favour of an alternate construction.
Secondly, the applicant in its written submissions directed me to the following paragraph in the Fuller declaration of 19 February 2002:
"In paragraph 6 Fuller notes the distinction in defining "cable bolt having a cable" as opposed to merely defining a cable, stating that a cable must be adapted, modified or the like during a manufacturing phase to create a cable bolt, with the provision of an engagement means at one end of the cable creating the cable bolt defined in claim 1."
The applicant then submitted that to construe claim 1 to encompass any length of cable, as opposed to a cable bolt having specific features, provides an absurd result and should be rejected following Henricksen (supra).
In referring to entire paragraph 6 of the Fuller declaration, in addition to the pieces forwarded in the written submission, I note Mr. Fuller continues his understanding of the wording by stating:
"…The provision of an engagement means at one end of the cable creates the cable bolt. I understand from the description in the specification that the provision of the engagement means may simply be the provision of a slanted end face on the cable by cutting the end at an oblique angle, or by welding an attachment to the end of the cable…Alternatively, the adaptation of the cable to create a cable bolt might be something as simple as welding the wires together at the ends."
Generally speaking, the use of a different term such as "engagement means" implies a different integer when affording a plain meaning to words in a document under the normal rules of construction. (Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461 at 478). That is, the "engagement means" is separate to the cable and is added at some point in the construction of the cable bolt. However, in order to give claim 5 any effect, (i.e. "…wherein the engagement means is a slanted end of the cable..."), I am driven to interpret the engagement means in claim 1 as being one end of the cable rather than a separate integer. Such a position is clearly therefore not “absurd” and is in fact supported by the applicant's independent witness Fuller, as noted above.
Also, I note in passing, that while it is not necessary that claims include all embodiments, the above plain meaning approach would not include within its scope the second embodiment of the invention exemplified in figure 2 in which there are no "separate" engagement means present.
Having taken the position that the engagement means may be part of the cable, there is no evidence then to suggest that a square cut cable end, (i.e. the end of a cable cut to length) is not an engagement means, as submitted in the McCowan declaration. There is nothing before me to suggest when interpreting claim 1, that a square cut cable end is to be excluded from its scope, whilst at the same time, a slanted oblique cut cable is to be included within the claim's scope, as is required to give claim 5 any effect.
Therefore, I believe claim 1 may include within its scope a drive stub welded to a cable, a cut cable end, or the welding together of wire strands of a cable (as pointed out by Fuller), in a manner to define an engagement face.
NOVELTY
A claim will lack novelty if it is not novel in the light of information in a single document made publicly available anywhere in the world before the priority date, or in formation made publicly available through doing a single act in Australia before the priority date in question.
The basic test for novelty is the " reverse infringement test" as stated by Aiken J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd, (1977) CLR 228 at 235:
"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, Rodi and Wienenberger AG v Henry Showell Ltd, (1969) RPC 367 at 391.
A more recent statement in relation to novelty is given in Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 at 517:
"It is well accepted that the prior art must disclose all features of the invention embodied in the patent in suit and must do so in clear, unequivocal and unmistakable terms. The prior art must enable the notionally skilled addressee at once to perceive and understand and be able practically to apply the discovery without the necessity of making further experiments. What ever is essential to the invention must be read out of or gleaned from the prior publications."

In addressing the issue of novelty, the opponent focussed on numerous patent documents and brochures, which I will review in turn.
AU Patent 690640 (Annexure BM-B dated 9 August 2002) also referred to as the Jennmar Dolly System.
It was not disputed that this patent application was published on 21 August 1997, clearly before the priority date of the present application
Jennmar submitted '040 discloses a specially configured dolly or driver having internal formations designed to engage engagement surfaces defined by the indented outermost surfaces of the cable filaments forming the cable bolt for the purposes of rotating the cable bolt during resin mixing.
The applicant submitted that the drive heads of '040 do not engage a purpose provided engagement means, which includes an engagement face. In particular they submitted:
"The cable bolts disclosed in Patent No. 690040 comprise a standard, unmodified cable and a barrel and wedge assembly. The cable drive heads attempt to rotate the cable by engaging the standard circumferential surface of the strands of the cable, rather than any engagement means defining an engagement face provided on the cable bolt."
A relevant disclosure at pages 5-6 of the citations reads:
"The bolt drive head 10 includes a cable receiving bore 28 extending into the body 20…(of the drive head, my addition). The cable receiving bore 28 is a substantially hexagonal bore formed by six substantially planar engaging faces 30. As shown in Fig. 3, the cable 14 is received within the cable receiving bore 28 wherein the engaging faces 30 abut the six strands of the cable 14 and wherein rotation of the body 20 will rotate the cable 14. The bolt head drive 10 includes a drive bore 32 extending into body 20 from the rear face 24…wherein the drive bore receives and is rotatably coupled to a drive shaft 34. Rotation of the drive shaft will rotate the body 20 and a cable 14 when the cable is received within the cable receiving bore 28. Drive shaft 34 may also be made integral with the body 20."
Given my earlier construction wherein a substantially square cut cable at one end may satisfy the feature of an engagement means, I believe this citation discloses all of the essential features of claim 1. Clearly the engagement means does not protrude laterally beyond the cable. The engagement face for engagement with a tool to effect rotation is met by the six strands of cable abutting the engaging faces 30 of the cable receiving bore 28 of the tool effecting rotation, namely body 20 and integral drive shaft 34.
Therefore I can only conclude that claim 1 fails the reverse infringement test, rendering it not novel in the light of AU Patent 690640.
I believe claims 2 to 8 are novel when compared with this publication. In particular, claims 2, 3, and 4 require the engagement means to be " in the form of an attachment…said attachment being welded to said one end of said cable…". This feature is considered essential to these claims and is absent from the citation.
Claims 5 to 8 define a slanted end of the cable as the engagement means. Again there is no disclosure of a slanted end of cable, considered essential to these claims, in the '040 citation.
AU Patent 638811 (Annexure BM-4 dated 9 August 2001).
This document is recorded as being published 20 November 1997, again prior to the earliest priority date of the present application. This fact was not disputed.
In general terms the citation in its Summary of Invention describes a cable with various forms of wrench assembly. The wrench comprises a hollow tubular body having a closed end and a second open end. The second end has a plurality of apertures therein. Each aperture is adapted to receive an individual strand of the multi-strand cable when the individual strand is separated from the remaining strands of the cable. Also included is a cable opening tool to open the cable stands, and a means for rotating the wrench body and subsequently the cable.
Reading the citation further reveals that the separation of the strands may be done manually once the cable opening tool is initially used. Once the strands have been separated they are individually passed through the respective apertures of the wrench assembly.
The opponent directed me particularly to Figures 10-14 of this citation and the comments made by Brian McCowan at paragraph 8 of his 9 August 2002 declaration. Mr. McCowan notes a similarity between this device and that of AU '040 above, in that the surface of the cable strands provides the "engagement face" and so the engagement means does not protrude laterally. He also points out that this device is primarily used for cables that have relatively few strands, where the gaps between the strands are quite large and well defined.
DSI submit again that the cable of this citation cannot be considered to be a cable bolt, consistent with its construction of the term "cable bolt". It also submitted that the unwound portion of the cable does not exhibit the characteristics of a cable which necessarily has the wires tightly wound.
I note also the Fuller declaration on this citation, which states:
"... Whilst these unwound wires engage the end fitting for subsequent rotation of the cable bolt, the wires protrude laterally beyond the remaining cable, and accordingly can not be said to not protrude laterally beyond the peripheral surface of the cable at the end as required of claim 1. As discussed above the engagement means of the invention does not protrude laterally beyond the cable to enable the use of pre-tensioning equipment designed for plain cable having no protrusions and to enable a barrel and wedge anchor to be fitted over the engagement means without obstruction. Clearly this will not be possible when the end of the cable is unwound into separate wires…"
I am inclined to agree with DSI's argument here. Figures 3 -5 show an invention where the individual strands become the engagement means. I do not believe the individual strands once unwound and splayed may reasonably be considered to constitute a cable, or in fact a cable bolt. The engagement means (strands) are clearly shown as protruding beyond the wound cable when engaging with the wrench. Consequently, this citation does not disclose all of the essential features of claim 1.
As mentioned earlier, Jennmar directed my attention to Figures 10-14 of the citation. I note the citation does not provide a description for these figures in the specification. Figure 10 appears the most relevant. It shows a tool engaging wound cable strands, which do not protrude. However this figure is closest in appearance to Figure 3, which is described as a means for initially separating the cable strands from each other. As a consequence of the lack of description for Figures 10-14, I am unable to clearly identify the essential features of the claim in the drawings. I do not believe the document contains "clear and unmistakable direction" as required by General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd, (1972) RPC 457 at pages 485, 486, when construing a document for want of novelty.
Consequently I find that claim 1 does not lack novelty in the light of Australian Patent number 683811.
The Spin Bolt Brochure (Annexure BM-F dated 9 August 2002)
Jennmar assert this document was publicly displayed at the Queensland Mining Exhibition in July 1997. In addition, Mr. McCowan in his declaration states the Spin Bolts were offered for sale in 1997, and the brochure publicly displayed at the said Mining Exhibition "around August 1997". The brochure itself reads “Issue 1, July 1997". I note also that Mr. McCowan is listed on this brochure as a person to contact for more information on the product.
DSI submit there is no clear evidence that the Spin Bolt was ever publicly used in Australia before the priority date, with the only public disclosure being Annexure BM-F to the McCowan Declaration of 9 August 2002.
As there is no evidence to the contrary, I am prepared to accept that the brochure was publicly displayed at the Mining Exhibition around August 1997, that is, before the priority date of the present invention. Whether or not Spin Bolts per se, were publicly available prior to the priority date need not be considered at this point, as the issue of "prior use" is somewhat redundant given the published document.
The brochure describes the Spin Bolt as "a simplified cable bolt design distinguished from other cables by its unique "Spin and Push" installation and tensioning system. The "Spin and Push" system, which allows full encapsulation to be achieved, has been made possible by modifying the drilling chuck to grip the cable." The brochure then describes the method of installing the cable bolt as follows:
1)"Insert the Spinbolt through the chuck of the drill.
2)Insert required chemicals into hole and then feed the Spinbolt into hole.
3)Spin and push Spinbolt through the resin
4)Retract the chuck and then using the Spinbolt Dolly spin and push the Spinbolt leaving 150mm of cable out of the hole"
Mr. McCowan states there are two ways to effect rotation of the Spin Bolt during the resin mixing process. The first involves a ‘through the chuck’ device as developed by Colrok in AU patent 719385. The second, involves using a dolly similar to the Jennmar Dolly System of '040 above, for those unable to access the through the chuck device.
There was some conjecture whether or not in fact the Jennmar Dolly system itself, was used to effect rotation of the Spin Bolt. However it is clear the present inventor, Mr Rataj, understood that some type of dolly tool was used to grip the Spin Bolt cable and effect rotation of that cable. Mr Rataj in fact made further comment on the lack of effectiveness of this particular dolly tool in muddy conditions. (Rataj declaration of 17 February 2003).
DSI argued there is no clear disclosure of any engagement means defining "an engagement face for engaging with a tool to effect rotation". DSI concluded that claim 1 would be novel over the Spin Bolt for the same reasons as discussed in the '040 patent. That is, “the cable drive heads attempt to rotate the cable by engaging the standard circumferential surface of the strands of the cable, rather than any engagement means defining an engagement face provided on the cable bolt."
Again I am not persuaded by this argument. As indicated earlier, I believe claim 1 allows within its scope a cut length of cable as a cable bolt, provided the cable meets the other features of the claim. The Spin Bolt brochure discloses a length of cable as cable bolt. The feature of “engagement means defining an engagement face for engagement with a tool to effect rotation” is met by the circumferential surface of the strands of the cable, (as recognised by the applicant above). From the figure in the brochure, the strands do not protrude laterally beyond said cable at one end.
Given that the essential features of claim 1 are disclosed in the Spin Bolt brochure, I find that claim 1 fails the reverse infringement test and therefore lacks novelty in the light of this document.
The Colrock Patent, AU 719385

This patent discloses a tendon (cable bolt) being hydraulically gripped intermediate its two ends, rotated, pushed forward towards the bore, released and re-gripped further along the tendon (distal to the bore) repeatedly until the tendon is located in the bore. Figure 1 shows the tendon being gripped and rotated at one end, by a drive motor having a sleeve insert and hydraulically operable jaws.
The citation therefore clearly teaches a cable bolt having an engagement means at one end of the cable. It discloses an engagement face, (being the periphery of the tendon) defined by the engagement means engaging with a tool to effect rotation of the tendon, wherein the engagement means does not protrude laterally beyond the tendon (cable) at one end.
Therefore I believe claim 1 similarly fails the reverse infringement test and lacks novelty in the light of AU Patent 719385.
I note in passing this citation, like the previously mentioned documents, does not in any of its embodiments disclose a cable bolt having a drive stub arrangement attached. Therefore if claim 1 were to reflect the drive stub embodiment of the invention it would appear novel and inventive over these citations. The features of the dependent claims 2-4 appear to reflect common variations and do not add to the patentability of the invention.
INVENTIVE STEP
The test for inventive step is as given by Aicken J in Wellcome Foundation Limited v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at page 286:
“The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.”
This test was recently affirmed by the High Court in Aktiebolaget Hassle v Alphapharm Pty Limited [2002] HCA 59 (12 December 2002).
What is the problem to be solved?
The specification discusses known prior art methods of rotating cables for resin mixing, including three patent specifications. It then describes the following:
“All of the above described methods are relatively expensive due to the requirement of machining of the hexagonal shaped barrel or plug segments with special protrusions or threading of the cable.
Object of the Invention
It is the object of the present invention to overcome or substantially ameliorate at least one of the above disadvantages.”
DSI therefore contend that the object of the invention is to provide an alternate cable bolt and consequent method of rotating the cable bolt which is relatively inexpensive as compared to the three prior art cables described.
Jennmar submitted there are two problems to be overcome. They are, primarily - expensive complex prior art drive attachments; and secondary - protrusion of these prior art fittings beyond the cable periphery prevented the use of known tensioners. I note Jennmar also proposed that bolts having integral square drive stubs smaller than the bolt diameter were well known and form part of the common general knowledge.
DSI alleges the opponent and its witnesses have chosen to ignore the problems set out in the specification to be solved. Jennmar are said to have redefined the problem by effectively including the solution itself, or components thereof as part of the problem. I am inclined to agree with DSI’s submission on this point. I believe the problem to be solved is as identified by the applicant above.
In drawing this conclusion, I am particularly mindful of the inventor’s own declaration of 14 February 2002, where Rataj states:
“I set about developing an improved and more cost effective manner of rotating and pre-tensioning a cable bolt, and in particular a cost effective cable bolt that can be both rotated and readily pre-tensioned in resin anchored applications”.
There is no persuasive evidence before me to accept the problem to be solved is anything other than that stated by the inventor himself.
Who is the person skilled in the art?
I believe the person skilled in the art would be a person or team of people, who is a skilled but non-inventive worker in the mining industry. In particular, one with a knowledge of mining roof control and the securing of roof strata using cable bolts in resin anchored applications. There were no specific submissions made by either side on this point.
The evidence from the expert declarants can be useful in determining what is common general knowledge and what a person skilled in the art might have done in the light of common general knowledge. I shall refer to the respective declarant's evidence as appropriate.
What is the common general knowledge?
The notion of what is common general knowledge has been clearly set out in Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Limited (1980) 144 CLR 253 at 292 where Aiken J stated:
“The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade...and it must be treated as being used by an individual as a general body of knowledge.”
Jennmar proposed the following material is considered common general knowledge in the art:
1. Bolts having integral square drive stubs smaller than the bolt diameter for the purposes of rotation during resin mixing, while enabling easy installation of tensioning devices over the drive.
Jennmar cite a rigid bolt known as the Titan “Tit” bolt as evidence, and state that all four experts acknowledge this as being well known. They also provide the Dupont “Hi-Tech” bolt as further evidence of bolts having integral square drive stubs. (McCowan’s declaration of 9 August 2001, para 17).
Certainly, the inventor Mr. Rataj acknowledged the existence of the Titan "Tit" solid rock bolt prior to 13 January 1998, as indicated in his 19 February 2002 declaration (para 32).
Given the submission from Jennmar, and the inventor's own admission, I accept the Titan "Tit" bolt forms part of the common general knowledge in the sense that it forms part of the background knowledge available to those in the trade, whilst not specifically being a cable bolt itself.
2. The idea of a tensionable cable bolt having an integrally attached drive head for the purpose of resin mixing was known.
Jennmar cites its own patent, AU Patent 685715, published July 1997, as evidence of this being common general knowledge.
DSI disputed this for the following reasons. The patent is a US originating patent, and none of the various declarants were aware the cable bolt disclosed therein was ever used, known or made in Australia prior to January 1998, even though each of the declarants were working in the field at the time.
Based on the evidence before me I accept DSI's position. I do not believe this patent forms part of the background knowledge and experience available to all in the trade. One witness for the opponent merely summarised what the patent discloses, and how its modus operandi in the US affects the size of drive head used there. Jennmar's second witness merely stated an integral drive head was known overseas and disclosed in 685715 published at IP Australia 17 July 1997. Neither indicated that such a bolt was known or widely used in Australia.
3. The use of hydraulic cable tensioners that can only operate on cable having an unobstructed free end that operate to pull the cable end through an aperture in the tensioning device.
The opponent offered numerous parts of the Wilkes and McCowan declarations, along with para 27 of the Fuller declaration of 17 February 2003, as evidence of this common general knowledge . (I note the Fuller declaration does not clearly state he believes this arrangement to be common general knowledge, rather it discusses known systems in the art).
However, Jennmar also pointed to the present specification as evidence such tensioners were common general knowledge. It describes the fact that the attachment (to the cable) does not protrude beyond the perimeter of the cable "enables pre-tensioning equipment which can only be used on a cable with no protrusions to be used".
This seems to confirm the evidence provided by Wilkes and McCowan, and to me adds enough weight for me to accept this as common general knowledge over the arguments presented by DSI.
4. The market demand for improved resin anchored cable bolts capable of pre-tensioning to high loads only arose around 1996-97. Prior art systems could not be tensioned to high enough loads, prompting the development of new systems such as the cable spinning dolly systems, particularly AU Patent 690040, the Spin Bolt system, the Colrock system, and the dolly drivers of AU Patent 683811.
Again, Jennmar offers declarations by Wilkes and McCowan, but also offers statements by Fuller (para 28 of his 19 February 2002 declaration) and Rataj (paras 20-22 of his 14 February 2002 declaration) as evidence.

The Rataj and Fuller declarations acknowledge that in the mid-nineties there was a need for improved systems, which allowed superior tensioning. They do not acknowledge that the art raised such as AU '040, or the Spin Bolt system are in fact common general knowledge. DSI therefore submitted the opponent has failed to establish the state of the common general knowledge.
I am inclined to agree that the evidence suggests there was a need to improve the tensioning systems. However, from the material presented it is not evident that the documents raised by Jennmar as being the new improved systems, can be considered common general knowledge. That is not to say however, they would not have been ascertained, understood and regarded as relevant in their own right.
The Cable length citations
Given that claim 1 includes within its scope a cut length of cable, capable of being gripped and rotated with a tool, in my opinion the claim lacks an inventive step in the light of prior art disclosing such cut lengths of cable acting as cable bolts. Specifically AU patent 690040, AU patent 715385 and the Spin Bolt brochure as discussed earlier.
There is no evidence before me to suggest that the notional person skilled in the art would not have ascertained, understood and regarded as relevant these documents, given they relate directly to resin mixing cable bolts.
When faced with the problem of cost of manufacture due to the machining of parts, I believe it would be obvious to look for a solution, which removes as many of such costly parts from the system as possible. Given the citations disclose a length of cable which is capable of being gripped to effect rotation at one end by a suitable tool I find the person skilled in the art would as a matter of routine arrive at the invention of claim 1 as an obvious solution.
Discussion of other relevant prior art documents
The second inventive step argument raised centres around claim 1 being construed to include the drive stub embodiment of the invention. That is, the engagement means is a separate integer to the cable.

100. The opponent raised three prior art cases where it felt the claims lack an inventive step. They are:
·    the Titan "Tit" bolt;
·    Jennmar Patent 685715; and
·    Jennmar Patent 685715 in the light of the Titan “Tit” bolt.
Would the person skilled in the art have ascertained, understood and regarded the documents as relevant?
101. The Titan 'Tit' Bolt - As discussed, I believe a person skilled in the art would have ascertained and understood this prior art document.
102. Whilst Rataj acknowledges the document, he claims never to have considered the document as relevant when conceiving the present invention. He goes on to state that forming a reduced cross section portion of a solid bar by forging is a completely different process to welding an attachment to the end of a high strength steel cable. Fuller expresses a similar view.
103. Jennmar submits the Titan "Tit" bolt is common general knowledge, and therefore is clearly relevant. It argues the opposed application is no more than a direct application of the well known features of the "Tit" bolt. The drive stub in both cases performing the identical function, (mixing resin) and conferring the same advantages, (i.e. not protruding beyond the bolt diameter). It's witnesses both state the features of the rigid "Tit" bolt are well known and it would be obvious to apply them when considering the problem being addressed.
104. Whilst the document may have been part of the common general knowledge, I am not convinced the document would have been particularly regarded as relevant in the light of the problem being addressed. Specifically, I recall the opponent believes the problem is a two part one, which addresses both cost, and the protrusion of known prior art fittings beyond the cable periphery preventing the use of known tensioners.
105. If I were to accept this as the problem, then I may accept the document would be considered relevant to solving the issues. However, I reiterate I do not believe the problem is that set out by the opponent. The opponent appears to rely on the benefit of hindsight by introducing a possible solution into the problem as it sees it. I take the inventor's statement of the problem as the one to be solved.
106. I do not believe it is obvious that the features of the integrally forged rigid "Tit" bolt would be directly applied to a cable bolt. The opponent's argument in this matter is not persuasive. There is no evidence to state why, when looking for solutions to address the cost of machining hexagonal shaped barrel and plug segments with special protrusions, or problems with the threading of the cable, one would apply the "Tit" bolt features as a matter of routine. It is not apparent that having an integral engagement means, which does not protrude beyond the cable, is the obvious solution amongst all possibilities to solve the problem.
107. Consequently I find the claimed invention is inventive over the "Tit" bolt document.
108. Jennmar Patent 685715 - DSI asserted that it seems unlikely the person skilled in the art could reasonably have been expected to have ascertained this document as none of the various declarants were aware of it despite working on the development of resin anchored cable bolt systems.
109. I do not agree with this assertion. I would expect the notional person skilled in the art (being a "diligent searcher" - see Dyno Nobel Asia Pacific Ltd v Orica Australia Pty Ltd [199] FCA 1369), to have conducted extensive literature searches including journal articles and patent literature in looking to solve the problem. One would also expect such a person to regularly keep up to date by informing themselves through such literature. Indeed Mr. Rataj admits to searching the literature and informing himself of foreign and Australian patents.
110. As a result, I believe the notional skilled worker would, before the priority date of the opposed claims, be reasonably expected to have ascertained this document.
111. The patent is titled "Cable Bolt Head" and it discloses a multi-strand cable bolt having a barrel and wedge assembly and a drive head to help effect rotation. There is little doubt in my mind that having ascertained this document, the person skilled in the art would have understood and regarded this document as relevant.
112. This document clearly discloses a mine roof cable bolt suitable for resin grouting. The bolt as mentioned above includes a drive head attached to the multi-strand cable at one end. Jennmar submit the drive head protruding laterally beyond the cable is the only difference between the citation and the invention of claim 1.
113. As pointed out by McCowan, and recognised by the applicant, the method of installation and tensioning differs between the US and Australia. Essentially there is a need in the US for a larger drive head to apply the necessary torque to rotate the bolt. In addition there is no need for the US bolt to have a head small enough allow the cable end to be inserted into a cable gripping tensioning device.
114. Jennmar argue the only problem not addressed by the citation is 'the secondary' one of the fittings protruding beyond the cable periphery. They submit the only solution is to ensure that a drive engagement means does not extend beyond the periphery of the cable, and that it is obvious to modify '715. Jennmar continues by stating once this step has been taken, there is no invention in welding such a drive means onto a cable end.
115. I do not agree with this position. Again, the problem to be solved is the expense of machining barrel or plug segments having drive protrusions, or having to thread the cable. The cable bolt as claimed has completely omitted a barrel and plug arrangement in addition to the reduced diameter engagement means. The citation still includes a barrel and plug arrangement as well as the larger drive head.
116. In addition, the drive head of the citation has either an integral sleeve, which may extend into the barrel assembly, or, a central bore for receiving the cable end. The drive head may be secured to the cable by adhesives or a cable spreading wedge or combination thereof.
117. Given the construction of the drive head above, I do not believe there is sufficient evidence to suggest that a skilled addressee as a matter of routine would consider the claimed solution as obvious. The steps required to reach the claimed invention include:
1.     motivation to remove the barrel and plug arrangement;
2.     redesign of the larger drive head having a sleeve or bore to exclude these features so as to reduce its diameter to not extend beyond the cable's periphery; and
3.     fastening the "new" head to the cable end without extending beyond the periphery of the cable.
118. Therefore I do not believe it is obvious to merely reduce the head size of '715 to arrive at the claimed invention. Hence the invention as claimed, when construed to include a separate integer as engagement means, is considered to have an inventive step over AU patent 685715.
The Jennmar Patent 685715 in the light of the Titan “Tit” bolt
119. Jennmar argued this case is the same as that above. However, the obvious step of making the drive surfaces smaller than the diameter of the cable is further enhanced in that knowledge of the 'Tit' bolt would directly result in the solution of a small square section drive stub as the engagement means.
120. Again I disagree for similar reasons to those outlined above. I am also not convinced it is the obvious solution, without invention, to convert a drive head, (which circumscribes the cable and is adhered to it, or uses a spreading wedge), to a reduced diameter integral drive head on a cable.
121. Given the problem at hand, I find the invention as claimed is inventive over the Jennmar patent in the light of the common general knowledge provided by the "Tit" bolt.
Would the claimed invention lack an inventive step in the light of common general knowledge alone?
122. I have previously concluded that Jennmar submissions (1) and (3) above, were common general knowledge in the field of the invention at the relevant time. However, this body of knowledge clearly omits essential elements of the result achieved by the inventor when solving the problem that confronted him. Consequently I find that the claimed invention would not have naturally suggested itself to a skilled worker equipped with common general knowledge alone.
MANNER OF MANUFACTURE
123. The law as to manner of manufacture has been set out in the High Court decision of NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd, 32 IPR 449 and confirmed in
Advanced Building Systems Pty Ltd and Another v Ramset Fasteners (Aust) Pty Ltd (1998) 40 IPR 243, and in the Full Federal Court decision of Bristol-Myers Squibb Company v F.H. Faulding & Co. Ltd 46 IPR 553.
124. Jennmar submitted that the invention as defined in claim 1 included within its scope a mere cut length of cable as could be used with known cable spinning drivers. Therefore it alleges the claimed invention is not for a manner of manufacture, as it does not cross the threshold of ingenuity for an invention.
125. DSI submitted that following the reasoning of Bristol-Myers (supra) the question of lack of “threshold ingenuity” should be considered under the ground of inventive step only. I note the invention as claimed in claim 1 was found to lack an inventive step.
126. Whilst there may exist a myriad of prior art against which one may assess obviousness, one should remember to exclude this when assessing whether or not the threshold of inventiveness has been met. The threshold of inventiveness is to be assessed on the face of the specification only. Given the disclosed prior art and the invention described, I find the subject matter of the invention has the necessary quality of inventiveness.
127. Therefore I consider the invention to be for a manner of manufacture.
SECTION 40
Fair Basis
128. Jennmar allege that claim 1 does not define an invention, is speculative and is not fairly based. In particular Jennmar submit that claim 1 includes within its scope embodiments not contemplated or supported by the specification.
129. The fundamental requirement for a claim to be fairly based on a particular disclosure is that, the disclosure must contain a “real and reasonably clear disclosure of the subject matter of the claim" - see CCOM Pty Ltd v Jeijing Pty Ltd 28 IPR 481 and (1994) AIPC 91-079, and Sartas No. Pty Ltd v Koukourou & Partners Pty Ltd and Nicola Leonardis 30 IPR 479 and (1995) AIPC 91-121.
130. As indicated during my earlier construction of the claims, I believe the scope of claim 1 exceeds the matter described in the two embodiments of the specification. In particular I believe the claim includes a length of cable having a square cut end. The specification is wholly silent on such a construction.
131. Similarly, each independent witness supports a broader construction of the claim.   Mr McCowan concurs with my own construction, “I would consider any length of cable to come within the wording of claim 1", and Mr Fuller believes “...the adaptation of the cable to create a cable bolt might be something as simple as welding the wires together at the ends". These valid constructions of claim 1 have no real and reasonably clear disclosure in the specification. It clearly describes two constructions for a cable bolt, namely the attachment of a square shaped section to an end of the cable, and a shear cut cable end.
132. Consequently I find claim 1 lacks fair basis on the matter described in the specification.
Clarity
133. I believe claim 1 is not clear for the following reason. The claim cannot be read applying a plain meaning to the words, nor can one resort to the dictionary principle for guidance. If one attempts to apply a plain meaning to the words, and assumes "engagement means" is a separate integer to the cable, then claims 5-7 become nonsensical, given they define the engagement means as a slanted end of the cable.
134. The onus is on the applicant to properly define the invention and clearly reflect the engagement means as a separate integer to the cable in an unambiguous manner. This has not been the case in this instance. Consequently a lack of clarity exists.
CONCLUSION
135. The present claims have been drafted in a manner such that the only way for me to give any effect to claims 5-7 is move away from a plain meaning interpretation of claim 1. This leads me to conclude that the monopoly claim 1 seeks to define is not restricted to a cable bolt comprising a cable and a separate engagement means (such as a drive stub as described) at one end of the cable, amongst its features. I believe the claim quite validly needs to be construed more broadly. In fact dependent claims 5-7 clearly require such a construction of claim 1, as they define a slanted end of cable per se as the engagement means. Hence, I do not find the claims to comply with sub-section 40(3).
136. As a consequence, the opponent has been successful in establishing a want of novelty against claim 1 when compared with AU Patent 690640, the Spin Bolt brochure, and the AU Patent 719385. Similarly, claim 1 lacks an inventive step in the light of these citations.
137. However a narrower interpretation of claim 1, reflective of the drive stub embodiment of the invention, is considered inventive over the prior art raised, given the problem to be solved.
138. Given claim 1 requires a broad construction in order to give sense to dependent claims 5-7, the claim includes matter within its scope for which there is no real and reasonable clear disclosure, rendering it not fairly based.
139. As a result of these conclusions, I believe the opponent has successfully made out their case. However I believe there is patentable subject matter in the present specification. Accordingly I allow the applicant 60 days from the date of this decision to propose suitable amendments.
COSTS
140. Under normal circumstances, costs follow the event. I see no reason to deviate from this practice here. As the opponent, Jennmar Australia Pty Ltd, was successful in its opposition, I award costs against DYWIDAG-Systems International Pty. Limited.
Lars Koch
Delegate of the Commissioner of Patents
13 July 2004
Patent attorneys for the applicant: Spruson & Ferguson, Sydney
Patent attorneys for the opponent: Baldwin Shelston Waters, Sydney