Kennametal Inc. v Sandvik Aktiebolag

[1992] APO 21

official notice

decision of a delegate of the commissioner of patents

Application        :    NO. 587141 in the name of KENNAMETAL INC.

Title:    Hard Tip Bit, Middle Section Concave Surface

Action: Opposition under section 59 (Patents Act 1952)

Decision:    Issued             .  Claims do not comply with Section 40.  Evidence included a B-level publication of a specification which was published after the relevant priority date; argument based on the A-level publication not admitted.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 587141 by KENNAMETAL INC., and opposition thereto by SANDVIK AKTIEBOLAG.

background

Patent application 587141 was lodged on 18 August 1987 as a convention application claiming priority from US application no. 905730, which was lodged in the United States on 9 September 1986.  The application was advertised accepted on 3 August 1989.  Subsequently Sandvik AG lodged a notice of opposition on 30 Oct.  1989.  Evidence in support of the opposition was served on 28 Feb.  1990; that in answer served on 28 Feb 1991; and that in reply was served on 20 November 1991.

The opposition was heard in Melbourne on 17 February 1992.  The applicant was represented by Mr. M. Royal of Phillips Ormonde & Fitzpatrick, Melbourne, assisted by Mr. R. Evans.  The opponent was represented by Mr. G. Munt of Griffith Hack & Co, Melbourne.

As the application was both lodged and advertised accepted before the commencement of the Patents Act 1990, the provisions of section 234(3) of the 1990 Act, and Regulation 23.3, are applicable. 

The notice of opposition lists all grounds of opposition that are available under section 59 of the Patents Act 1952.  At the hearing the opponent indicated that they relied only on the grounds of prior publication, and lack of novelty.

The Specification

The specification states that the invention relates generally to excavation and construction tools and, more particularly, is concerned with a cutter bit having a hard tip with a configuration which decreases the areas of high stress concentration created during fabrication and thereby increases wear life during use.  Used for road maintenance techniques, the cutter bits are mounted on a power-driven rotary drum; asphalt is planed off a road surface as the drum rotates and the bits strike or dig into the roadway.

The conventional tip is described with particular reference to US specification 4627665.  It is stated to consist of a tip section, a flange section, and a middle section that extends between them.  The tip section is defined by a rounded forward end which merges rearwardly into a shallow frustro-conical surface of revolution; the flange section has a flange defined by a right cylindrical surface which has a diameter substantially greater than the maximum diameter of the tip section.  The middle section is partially defined by a steep frustro-conical surface of revolution; at its upper end it merges at a round-off transition with the lower end of the tip section; at its lower end it has an extremely sharply-curved surface of revolution which merges with the upper end of the cylindrical surface of the flange.

The specification describes problems in the prior art with forming such conventional tips.  The tip is made by filling a mould with powdered carbide; the powder is compressed in the mould under high pressure; the compressed powder is removed and fired.  The specification identifies a number of problems associated with the compression of the powder in the mould - these are ascribed to uneven stresses developed in the powder.  Thus the specification states:

It has been found that the configuration of the conventional bit tip deleteriously promotes the creation of high concentrations of stress during its formation which produces stress cracks therein that result either in rejection of a portion of the tips during quality inspection at the factory or early failure during field use.

The specification's solution to the problem is primarily to provide a middle section in the form of a "continuous concave surface of revolution".

By providing the middle section in this form, the problems experienced with the manufacturing process of the prior art are overcome.  The specification states:

The tip of the present invention, although made of the same material as the prior art tip, eliminates the high stress concentrations and decreases the rejection rates experienced heretofore.  Further, the concave configuration results in less compaction of the flange section of the tip which allows the tip to be pushed easier out of the die without risk of its own destruction or damage to the die.

The specification ends with 39 claims, of which claims 1, 15, 20, 25 are independent claims.  The claims are directed to the cutter bit hard tip per se, to a cutting bit with a hard tip mounted thereon, and to a hard tip adapted to be mounted in a rotatable cutting bit.  None of the claims define a method of making the hard tip.  All claims contain the characterisation of the cutter bit hard tip as specified in claim 1.  Claim 1 is as follows:

A cutter bit hard tip, comprising:

(a)  an outer tip section;

(b)  an inner flange section; and

(c)a middle section with a substantially smooth surface, said middle section extending between and merging at its opposite ends with said tip and flange sections, said middle section being defined by a continuous concave surface of revolution.

section 40

At the hearing, I sought submissions on what was meant by the term `continuous concave surface of revolution'; in particular whether the term referred to a continuous surface that was concave, or to a surface that was continuously concave.  Mr. Royal for the opponent submitted that the term referred to a surface that was continuously concave - that is, it excluded a surface which was linear in some portions and curved in others, and Mr. Munt for the applicant concurred.

Whilst the parties concurred on this interpretation of the phrase, I do not.  The word continuous is an adjective, and the only noun that it can be qualifying is surface.  For the phrase to qualify the word concave, the word continuously would need to be used.

In my view, the term `continuous concave surface of revolution' includes within its scope a continuous surface of revolution that is partially defined by a steep frustro-conical surface of revolution.  The term does not restrict the surface to one that is continuously concave - that is, a surface which at any and all points is concave.  Thus the term, in defining the surface that extends between the tip and the flange, defines a surface which overall is a concave surface - but does not exclude part of that concave surface being frustroconical.

I therefore conclude that the claims in their reference to a `continuous concave surface of revolution' are not fairly based on the description.  Therefore the claims do not comply with the requirements of section 40.

The interpretation that I have placed on this term was not pursued by either party at the hearing.  Thus for the remainder of this decision, I will proceed on the basis that the term is a reference to a surface which is continuously concave.

evidence

The evidence in support of the opposition consists of a declaration by Mr. G Munt (the patent attorney for the opponent) which is accompanied by 3 patent specifications.  The evidence in answer consists of a brief declaration by Wayne H.  Beach, the inventor of the present application.  The evidence-in-reply is a short declaration by Kjell Eriksson, an employee of the opponent who has been an examiner in the Swedish Patent Office and a patent attorney.

I need to make some comments regarding the three patent specifications relied upon in the opponent's evidence-in-support - that is US specifications 4627665 and 4497520, and Australian specification 570230.

US 4627665

US 4627665 is referred to in the description of the prior art of the present invention.  At the hearing Mr. Munt stated that this document was included solely to illustrate the description of the prior art as given in the specification in suit; there was no intention to rely on this document to establish prior publication or lack of novelty.  Noting that the date of publication of this specification in the USA (let alone Australia) is after the priority date claimed, and that the issue of whether the claims were entitled to the earliest priority date claimed was not raised, I accept that this document is not relevant to the determination of this opposition.

AU 570230

Australian application number 570238 became OPI in Australia on 27 September 1984 under application no. 25615/84; this date is well before the earliest priority date that could be accorded any claim of the present application.  The number 570230 was allocated upon its advertisement of acceptance (and simultaneous publication as a `B' level publication) on 10 March 1988.

The declaration by Mr. Munt refers exclusively to the patent specification of Australian patent 570238 (not that of 25615/84), and includes a copy of the `B' level publication - that is, a document that was published well after the application date of the present application, and which also included amended pages (which were filed after the present application date.)  It also transpired that the copy of the specification supplied was apparently incomplete, with page 1B being omitted.

Mr. Royal submitted that I should not consider the specification of 570238, as it was published after the application date of the present application.  Mr. Munt submitted that he should at least be permitted to argue on the basis of those pages in the specification which were clearly lodged with the original application (as evidenced by the date perforation marks on each page).  At the hearing I expressed some concern that if this document was truly relevant, in the public interest I would not want to `bury my head in the sand' and ignore the `A'-level publication of the document.  Mr. Royal submitted that the proper forum for looking after the public interest in this circumstance is a bar-to-sealing action subsequent to the determination of this opposition.

I note that in opposition matters I am not constrained by the strict rules of evidence.  Nevertheless, the opponent bears a heavy onus to establish that the relevant disclosures occurred before the priority date.  That onus is not discharged by providing a document published after the relevant priority date, let alone one which also includes amended pages lodged after the priority date.  I do not think that the opponent, having provided in evidence the `B'-level publication of a patent specification which includes amendments filed after the relevant priority date, can subsequently argue the opposition on the basis of the `A'-level publication of that specification.

I conclude that:

.the `B'-level publication of the specification of 570238 was first published after the priority date of any of the claims;

.there is no basis (absent a request to adduce further evidence) for me to consider an earlier publication of the specification of that application; and

.there is therefore no need for me to consider that document any further in these proceedings.

I should add that this does not exclude the Commissioner from considering the `A'-level publication in a bar-to-sealing action; indeed such a consideration would seem to be mandatory in the circumstances. (I also note that if Chapter 5 of the Patents Regulations 1991 applied to this opposition, I could consider invoking regulation 5.11.)

US 4497520

To establish the publication date in Australia of this specification, the opponent has relied upon a copy of a letter form from the `Sales and Distribution Unit' of the Patent Office. This letter form asserts that US specification was OPI in Australia on 12 April 1985. While this may constitute a good indication that the document was OPI on that date, it does not constitute the requisite degree of proof; the form does not carry with it any explicit or implicit authority that the statements contained therein are factual. This is to be compared with certificates issued pursuant to section 197 of the Patents Act 1990,(or section 29 of the 1952 Act) which constitute prima facie evidence of the matters in the certificate.

As a result, I am forced to the view that the opponent has failed to discharge its responsibility to show that this citation was published in Australia before the priority date.

At the hearing, the applicant proceeded on the basis that US 4497520 was OPI on the date indicated on the letter form, effectively acceding to that date.  I have proceeded likewise.

As a result of the above considerations, I conclude that the only citation that I need further consider in these proceedings is US 4497520.

submissions and decision

US patent 4497520 (herein after called the GTE patent) discloses a rotatable cutting bit of the type having a head portion and a depending shank portion.  The bits are used in mining and for removing road surfaces.  The cutting bit in the GTE patent has, inter alia, the following features:

.a base,

.a conically-shaped tip,

.an intermediate section having a maximum diameter less than the diameter of the base, contiguous said base and tip

.the intermediate section and base forming a fillet at their juncture so that the base forms a shoulder with the intermediate section.

In his evidence-in-support, Mr Munt referred to the GTE patent, and particularly that it discloses:

.the intermediate portion comprises a frustro-conical shape and a fillet to provide a smooth transition between the base and the frustro-conical shape, and

.the intermediate section being described in the specification as a frustro-conical shape that tapers outwardly from the tip to the base. 

There is, however, no disclosure that the intermediate section can be a continuously concave surface of revolution.  This was recognised by Mr Munt when he submitted that the (only) difference between the cutting insert of the GTE patent and claims of the present application lies in the distinction between an intermediate portion that is frustro-conical vis-a-vis a concave surface of revolution. 

Mr Munt further declared that:

intuitively, one would expect that a cutting insert having a frustro-conical intermediate portion would not be subject to the disadvantage of the "conventional hard tip" disclosed in the (admitted prior art - US 4627665) for the same reason that the "concave surface of revolution" is said to be not subject to this disadvantage.

I note here that prima facie an argument that the inventions are intuitively the same is tantamount to an argument of obviousness (which was not pressed as a ground of the opposition.)  However Mr Munt concluded in his declaration:

Thus, in practical terms, there is no difference between a cutting insert which has a frustro-conical intermediate section and a hard tip which has a middle section formed as a `concave surface of revolution'. 

which I interpret as an allegation that the difference in configuration makes no contribution to working of the invention (as per Griffin v Isaacs (1942) AOJP 737).

The declaration from the inventor (Wayne Beach) in the evidence-in-answer asserts advantages in the continuously curved surface - viz. "the frustro-conical section is not in practice the same as the concave section" because the shape of the middle section gives a better stress concentration and the fillet of the GTE patent would require a shoulder in the lower die cavity; the latter is not a feature of the lower die cavity required to produce the hard tip of the present invention.

Thus the evidence indicates advantages deriving from the shape of the hard bit.  These advantages do not necessarily accrue to the article per se, but accrue if the article is made by the usual process.

The opponent's evidence does not negate these purported advantages; indeed, if anything, the evidence-in-reply confirms the advantages.  The declarant in reply, Mr Eriksson, states that the Beach invention uses an old die design whereas the opponent uses a new die design that overcomes the same problem that Mr Beach set out to solve.  Mr Eriksson declares that;

... According to Mr Beach the cavity of a lower die includes the shapes of the outer tip section and the middle tip section.  However, this is an old die design and thus the problems that arise due to the design of the lower die are certainly not of a general nature but specifically relate to the old die design.

...  Specifically, Mr Beach indicates that due to the depth of the cavity of the lower die of the old design it is difficult to obtain an even compaction of powder.  This may be true for the old die design described by Mr Beach but it is not the case on a general basis.

...  Mr Beach described that the shapes of the cutter bits required constrictions and shoulders in the lower die cavity of the old die design.  I do not agree with this view.  Specifically, I note that by choosing a different partition line between the upper and lower dies it is possible to avoid the stress concentration problems referred to by Mr Beach.

... Sandvik manufactures the cutter tip of the Santrade patent (AU 570238) without facing the problems focussed on by Mr Beach.  Specifically, Sandvik uses a different die design, namely one in which the partition line between the upper and lower dies is at a different location to that of the old die design described by Mr Beach.

From these statements (and particularly the portioned I have underlined) I conclude that the opponent acknowledges the existence of problems in the prior art method of forming the cutter tip.  The applicant has addressed these problems by shaping the tip in a particular way, whereas the opponent has apparently addressed the same problems by creating a different die design.

I conclude that the feature of a continuously concave surface is directed to solving a recognised problem. Furthermore, as the specification states that the invention is concerned with a cutter bit having a hard tip with a `configuration which decreases the areas of high stress concentration created during fabrication', the feature of a continuously concave surface clearly contributes to the working of the invention - see Griffin v Isaacs, supra.

Also, I do not consider the continuously concave surface to be a mechanical equivalent, nor a mere workshop variation, of known constructions (see R.D. Werner & Co. Inc. v Bailey Aluminium Products Pty. Ltd. (1989) 85 ALR 679). The declaration by Eriksson that the problem can be overcome by a different die design is at best an ex post facto analysis; but in any case, it establishes no more than that the problem could be solved by a different die design - not that such different designs are mere workshop variations or mechanical equivalents.

I was also referred to the reverse infringement test as affirmed in Werner v Bailey (supra) and as explained in the following quote from Meyers Taylor v Vicarr Industries (1977) 137 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.

In my view the continuously concave surface is essential to the present invention, and the reverse infringement test is not satisfied.

conclusion

I conclude that, to the extent that the claims are directed to a continuously concave surface of revolution, the invention claimed is not prior published, and is novel.

However I found the term `continuous concave surface of revolution' did not necessarily mean a continuously concave surface, and as a result the claims do not comply with the requirements of section 40 as they are not not fairly based.

Both parties argued the opposition on the basis that the claims defined a surface that was continuously concave, I have not considered in detail the relevance of the citation to the claims as presently defined - that is, having a surface which is overall concave, but which may (for example) include a frustroconical section - but I express here my opinion that in this event my findings on prior publication and novelty would be different.

Although (for reasons given above) I have not considered the specification of AU 570230 in this decision I note here that, provided the claims are directed to a continuously concave surface, I do not believe there to be a bar-to-sealing based on the `A'-level publication of that document.

Accordingly, I direct the applicant to amend the specification to my satisfaction within 60 days from the date of this decision.

costs

I have found the opposition succeeds on the grounds of section 40 - a ground of opposition not pressed by the opponent.  I note that at the hearing both parties had a common view on the section 40 issue which differed from my present conclusions.  I also note my view that, on a proper construction of the claims as presently defined, my findings on prior publication and novelty would be different.

In all the circumstances, I make no award of costs.

(D.  HERALD)

Assistant Commissioner of Patents

Patent attorneys for the applicant : Phillips Ormonde & Fitzpatrick, Melbourne

Patent attorneys for the opponent : Griffith Hack & Co, Melbourne