Metso Outotec Sweden AB v FLSmidth A/S - [2023] APO 60

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Metso Outotec Sweden AB v FLSmidth A/S [2023] APO 60
Patent Application: 2018264756

Title:Roller mill and method of operating a roller mill

Patent Applicant:                   FLSmidth A/S
Opponent:  Metso Outotec Sweden AB
Delegate:  Andrew Burgess
Decision Date:  29 November 2023
Hearing Date:  8 September 2023

Catchwords: PATENTS – opposition to the grant of a patent under s59 – construction – clarity – claims 5 and 12 not clear – s40(2)(b) definition – claims define the invention – s40(3) support – claims are supported as they define the technical contribution – novelty – s7(1)(b) contrast to s7(3)(b) - claims novel – inventive step – claims 1-3, 5, and 7-11 not inventive – utility – claims deliver the promised benefit – opposition successful – applicant given opportunity to amend - costs awarded against the applicant

Representation: Patent attorney for the applicant: Christian Schieber of Griffith Hack Patent & Trademark Attorneys
Counsel for the opponent: Julian Cooke SC
Patent attorney for the opponent: Matthew Lord and Wayne Slater of IP Gateway Patent & Trademark Attorneys

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2018264756

Title:Roller mill and method of operating a roller mill

Patent Applicant: FLSmidth A/S
Date of Decision: 29 November 2023
DECISION
The opposition is successful. Claims 5 and 12 are unclear and do not comply with subsection 40(3). Claims 1-3, 5, and 7-11 do not involve an inventive step.
The Applicant has three (3) months from the date of this decision to file amendments to overcome the deficiencies.
I award costs according to Schedule 8 against the Applicant, FLSmidth A/S.
REASONS FOR DECISION
Background

Patent application 2018264756 was filed by ThyssenKrupp Industrial Solutions AG (ThyssenKrupp) on 5 April 2018 under the provisions of the Patent Cooperation Treaty. The application claims priority from DE102017208014.0 which was filed on 11 May 2017.
Acceptance of the application was advertised on 30 September 2021. Metso Outotec Sweden AB (the Opponent) filed a notice of opposition under Section 59 of the Patents Act 1990 (the Act) on 4 January 2022.
The statement of grounds and particulars (SGP) was filed on 4 April 2022 and was accompanied by citations D1-D10.
On 14 April 2023, a request was filed to record an assignment of a number of applications/patents, including 2018264756, from ThysenKrupp to FLSmidth A/S (the Applicant).
The Grounds of Opposition
The SGP sets out the following grounds for opposing the grant of the patent:
1.Lack of novelty
2.Lack of inventive step,
3.Failure to comply with subsections 40(2) and 40(3),
4.Claims not to a manner of manufacture, and
5.Lack of utility
The Opponent’s submissions[1] narrowed the grounds to:
[1] Opponent’s outline of submissions (OS), summarized at [4].
1.Novelty in light of D1, D2, and/or D3,
2.Inventive step in light of:
i.common general knowledge alone,
ii.common general knowledge and the combined disclosure of D1 and D2,
iii.common general knowledge in combination with D3,
3.Failure to comply with subsections 40(2) and 40(3), and
4.Lack of utility.
Onus
The substantive amendments to the Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) (the Raising the Bar Act) apply to the present case. The standard of proof in opposition proceedings is the balance of probabilities. If the Commissioner is satisfied, on the balance of probabilities, that a ground of opposition to the grant of the standard patent exists, the Commissioner may refuse the application. The opponent bears the onus of proof.
Evidence
On 28 June 2022, the Opponent filed their Evidence in Support (the EIS) comprising a declaration by Dr Michael John Daniel (Daniel#1) and annexures MJD-PN and MJD-1 to MJD-11. On 29 September 2022, ThyssenKrupp filed their Evidence in Answer (the EIA) comprising a declaration from Mr Johan (Hans) Ferdinand Knecht (Knecht#1) and annexures JFK-1 to JFK-3. On 2 December 2022, the Opponent filed their Evidence in Reply (the EIR), comprising a second declaration of Dr Daniel (Daniel#2) and annexure MJD-2-1.
The Deponents
The expert for the Opponent, Dr Daniels, provides extensive details of his background and qualifications in Daniel#1 at paragraphs 1-18. As a brief summary, his early career comprised work in South Africa as a metallurgist from 1990 to 2000, at which point he migrated to Australia and undertook further studies, with a particular focus in High Pressure Grinding Rollers (HPGR)[2]. He has since worked in a mixture of academic[3] and industry consulting roles[4], and presented extensively to various industry conferences, predominately, but not exclusively, in the field of HPGR systems[5]. I note in passing that amongst the numerous companies Dr Daniels has been employed with, one of note was Polysius, a related entity of the Applicant.
[2] Daniels#1 at 3-4, 9-12.
[3] Daniels#1 at 7 and 13.
[4] Daniels#1 14-17.
[5] Daniels#1 at 5-7.
The expert for the Applicant, Mr Knecht, has provided a CV of his background and qualifications as annex JFK-2 to his declaration. As a brief summary, after completing his Master of Mechanical Engineering, Mr Knecht joined Polysius AG[6] in 1981, which later became ThyssenKrupp Polysius, and later still became ThyssenKrupp Resource Technologies, a related entity of the Applicant’s predecessor in title of the opposed application. In his long history of employment with Polysius (and related entities) Mr Knecht has performed a range of roles, predominately in the mechanical design department and technical sales departments[7], and was identified as inventor of a number of patents related to HPGR technologies[8]. From 2013 to around the time of the priority date Mr Knecht was working as a technical consultant on HPGR technologies, for the Applicant and other companies.
[6] Note Knecht#1 refers to this as Polysius AG while JFK-2 refers to this as Krupp Polysius. The specific internal relations within the Polysius group are not material to this decision.
[7] JFK-2
[8] Knecht#1 at 14
The Opponent has observed that Mr Knecht has been engaged with ThyssenKrupp/Polysius and related entities for almost his entire career, and has since retired, and as such the Opponent advises that his knowledge and experience may be excessively focussed on the products produced by ThysennKrupp/Polysius[9], and/or out of date[10].
[9] OS at 20-21
[10] OS at 21
The Applicant’s comments are somewhat surprising, in that, while they consider both experts to be suitably qualified as persons skilled in the art[11], the Applicant goes on to suggest that both experts are to some extent over-specialised in the field of HPGR technology rather than the broader field of roller mills[12]. In defence of Mr Knecht, the Applicant also submits that his extensive involvement with Polysius and related entities cannot be held against him as Polysius was in fact one of only a very limited number of companies working in the HPGR field at all[13]. The Applicant notes this is tacitly endorsed by Dr Daniels who implies the technology was virtually monopolised by Polysius and Klöckner Humboldt Deutz AG (KHD) over a significant portion of Mr Knecht’s career[14].
[11] Applicant’s outline of oral submissions (AS) at 34
[12] AS at 36-37.
[13] AS at 42-44.
[14] Daniels#1 at 36-37
I note that Mr Knecht’s retirement appears to have been around 2018, shortly after the relevant priority date of 11 May 2017. Any lack of currency in his knowledge after that date is not relevant. I am also persuaded by the Applicant’s reasoning that since Polysius was one of the only companies working in HPGR technology, there is no cause for concern about a lack of corporate breadth in Mr Knecht’s experience.
I will return to the Applicant’s comments about the overspecialisation of the experts when considering the common general knowledge below, but for now it suffices that I am satisfied both experts are suitably experienced to provide comments as persons skilled in the art.
Specification
The specification is directed to, and titled as, a “Roller mill and method for operating a roller mill.” The background describes roller mills as “typically used for comminuting ground material such as, for example, limestone, clinker, or similar rocks.”[15] These roller mills comprise a pair of counter-rotating horizontal rollers which are spaced apart by a short distance, referred to as the “milling gap”[16], with material feeding from above being crushed or ground as it passes through the milling gap.
[15] Specification at page 1 line 8-9.
[16] Specification page 1 line 9-11.
The specification identifies that it was known to control the “lateral outflow” of ground material by providing “peripheral elements to be disposed on one of the grinding rollers.”[17] While there is some debate as to this point which I will return to later, Figure 1 of the specification serves as an exemplary (non-limiting) form of a roller mill provided with peripheral elements, reproduced below.
[17] Specification at page 1 line 15-17.
In the above plan view, numeral 16 refers to the milling gap and numerals 18, 20 refer to peripheral elements.
The background section identifies that these peripheral elements experience increased grinding pressure and high stress, which may lead to wear or breakage of the peripheral elements[18]. The specification later describes that in operation of the roller mill, material sticks to, and builds up on, the surface of the rollers to form an “autogenous wear protection [layer]”[19]. The specification then identifies that an important observation of the inventor was that this autogenous layer may be thicker in regions proximate the peripheral elements, and that it is this increased thickness that gives rise to the increased pressure experienced by the peripheral elements[20].
[18] Specification page 1 line 19-21.
[19] Specification page 3 line 11-13.
[20] Specification page 3 line 13-20.
To combat this, the invention involves using a stationary scraper element (‘scraper’, ‘scraper element’, and ‘scraping element’ are all used synonymously) positioned to scrape away a portion of the autogenous layer from the peripheral element and/or the roller surface[21].
[21] Specification page 3 line 22-26.
Regarding the positioning of the scraper element, the specification describes that it is “disposed on the end region of the grinding roller in such a manner that said scraping element does not contact the grinding roller”[22] where the end region is defined as:
“the end side of the grinding roller, the grinding roller surface adjacent thereto, as well as a region which surrounds the grinding roller surface and in which material accumulates.”
[22] Specification page 2 line 20-22.
Elsewhere, the specification indicates that the scraper element should be spaced apart from the peripheral element and/or the grinding roller to prevent contact which would wear/damage the scraping element[23]. The amount of this spacing may be “capable of being set.”[24]
[23] Specification page 3 line 28 to page 4 line 3.
[24] Specification page 4 line 5-14.
Further, the specification states that the scraping element extends in the radial direction of the grinding roller, either parallel or oblique to the peripheral element.[25] I note this implies that the peripheral element itself may be oblique to the radial direction, although there is no other disclosure of such an embodiment.
[25] Specification page 5 line 21-25.
Regarding the mounting of the scraper element, the specification describes that the scraper elements are attached to a “stationary machine frame” which may comprise a plurality of frame elements, which preferably includes a frame element which extends parallel to the axes of the grinding rollers[26]. The scraper elements may be attached to the parallel frame element as exemplified in Figure 3 (reproduced below, scraper elements labelled 42 and 44 and frame element labelled 40).
[26] Specification page 4 line 15-24.
The scraper element itself is described as comprising a scraping plate made from a wear resistant material such as tungsten carbide[27] releasably fastened to an arm to allow replacement[28].
[27] Specification page 4 line 31-32.
[28] Specification page 5 line 16-12.
Regarding the peripheral elements, in addition to the configuration shown above in Figure 1, where one of the rollers is provided with flange-like peripheral elements at each end, the specification also envisages forms where each roller has a flange-like peripheral element at only one end, with the rollers then arranged such that the flanges are at axial opposite ends of the milling gap. This is best exemplified in Figure 2, reproduced below.
Claims
The accepted application includes twelve claims. Due to what appears to be a typographical error there is no claim 6, so the claims are numbered as 1-5 and 7-13. A complete listing is included as an annex to this decision. The independent claims are claims 1 and 12, reproduced below, where for ease of reference I have adopted the feature numbering proposed by the Opponent (formatting altered for readability):
Claim 1: (i) A roller mill for comminuting granular material, comprising
(ii) a first grinding roller and a second grinding roller which are disposed opposite each other and drivable in a counter-rotating manner,
(iii) wherein a milling gap is configured between the opposing grinding rollers,
(iv) wherein at least one of the grinding rollers comprises at an axial end region of said grinding roller a peripheral element configured to extend across the milling gap and at least partially cover an axial end side of the opposite other grinding roller, and
(v) wherein a scraping element is present and configured for at least partially removing material from the grinding roller,
characterized in that
(vi) the scraping element is attached to a machine frame at which the grinding rollers are mounted,
(vii) in that the scraping element is held stationary relative to the grinding rollers, and
(viii) in that the scraping element is disposed at a location above, in a radial direction of the grinding roller, the axial end of the grinding roller at which the peripheral element is provided.
Claim 12: (i) A method for operating a roller mill for comminuting granular material,
(ii) the roller mill having a first grinding roller and a second grinding roller which are disposed opposite each other and drivable in a counter-rotating manner,
(iii) wherein a milling gap is configured between the opposing grinding rollers, and
(iv) wherein at least one of the grinding rollers comprises at an end region of opposite axial ends of the rollers a peripheral element which is configured to extend across the milling gap and at least partially cover an end side of the opposite grinding roller,
the method comprising at least the step of:
(v) removing at least partially material from that one of the axial end regions of the grinding rollers that comprises the peripheral element by means of a scraping element that is attached to a machine frame at which the grinding rollers are mounted and which scraping element is held stationary relative to the grinding rollers and is located over the relevant end region of the grinding roller.
Construction - Principles
The rules of construction are well established. As a useful summary, the Opponent refers[29] to the following passage of Jupiters v Neurizon[30]:
“There is no real dispute between the parties as to the principles of construction to be applied in this matter although there is some difference in emphasis. It suffices for present purposes to refer to the following:
(i)the proper construction of a specification is a matter of law: Décor Corp Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 at 400;
(ii)a patent specification should be given a purposive, not a purely literal, construction: Flexible Steel Lacing Company v Beltreco Ltd (2000) 49 IPR 331 at [81]; and it is not to be read in the abstract but is to be construed in the light of the common general knowledge and the art before the priority date: Kimberley-Clark Australia Pty Ltd v Arico Trading International Pty Ltd (2001) 207 CLR 1 at [24];
(iii)the words used in a specification are to be given the meaning which the normal person skilled in the art would attach to them, having regard to his or her own general knowledge and to what is disclosed in the body of the specification: Décor Corp Pty Ltd at 391;
(iv)while the claims are to be construed in the context of the specification as a whole, it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification, although terms in the claim which are unclear may be defined by reference to the body of the specification: Kimberley-Clark v Arico at [15]; Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588 at 610; Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461 at 478; the body of a specification cannot be used to change a clear claim for one subject matter into a claim for another and different subject matter: Electric & Musical Industries Ltd v Lissen Ltd [1938] 56 RPC 23 at 39;
(v)experts can give evidence on the meaning which those skilled in the art would give to technical or scientific terms and phrases and on unusual or special meanings to be given by skilled addressees to words which might otherwise bear their ordinary meaning: Sartas No 1 Pty Ltd v Koukourou & Partners Pty Ltd (1994) 30 IPR 479 at 485-486; the Court is to place itself in the position of some person acquainted with the surrounding circumstances as to the state of the art and manufacture at the time (Kimberley-Clark v Arico at [24]); and
(vi)it is for the Court, not for any witness however expert, to construe the specification; Sartas No 1 Pty Ltd, at 485–486.”
[29] OS at 42.
[30] [2005] FCAFC 90; 222 ALR 155 (Jupiters) at [67].
The Opponent also makes special note that while claims are read in light of the specification, it is the words of the claims that define the monopoly[31] and it is not legitimate to narrow or expand the scope of the monopoly as so fixed by the words of the claim by reference to other parts of the specification[32], and noting that where it is not possible to give meaning to the words of the claim the claim is invalid[33].
[31] OS at 43, citing Australian Mud Company v Coretell (2011) 93 IPR 188 and Sachtler v RE Miller (2005) IPR 605.
[32] OS at 46.
[33] Citing PAC Mining v Esco Corp (2009) 80 IPR 1 at [26]-[29].
The Applicant agrees[34] with the relevant portions of Jupiters, but in addition invite me to consider Britax Childcare Pty Ltd v Infa-Secure Pty Ltd[35] at [221]-[237] and [267]-[274], which expands on several of the points from Jupiters. In the context of the Applicant’s other submissions, I take it the key point they wished to get across is to emphasise the importance of context and common sense, as summarised by Middleton J at [273]:
“So, if on one construction, an embodiment of the invention would be absurd or surprising, and on another construction – read with a measure of common sense – the embodied invention is plainly practical, the latter construction is to be preferred.”
[34] Applicant submissions at 12-13.
[35] [2012] FCA 467.
Although I note this was followed immediately by the caveat that:
“This approach is the one I intend to apply, but keeping in mind that if non-technical words are plain and are not otherwise “defined” in the specification, then that plain meaning should be adopted by the Court.”
The Applicant also draws my attention to Product Management Group Pty Ltd v Blue Gentian LLC[36], Illinois Tool Works Inc v Airco Fasteners Pty Ltd[37], and Ranbaxy Laboratories Ltd v AstraZeneca AB[38] which all advocate for approaching the task of construction with a generous measure of common sense. While I am in full agreement that an absurd or overly literal construction should be discarded in favour of more common-sense constructions, I do note that all of these authorities are careful to highlight that this does not detract from the critical role of the words of the claim in defining the scope of the monopoly. This limitation of the purposive approach was well captured by Emmett J in H Lundbeck A/S v Alphapharm Pty Ltd[39] at [60]:
“There is no warranty for adopting a method of construction that gives a patentee what it might have wished or intended to claim, rather than what the words of the relevant claim actually say. While such an approach may be appropriate where there is a genuine ambiguity, it is not permissible to read an entire limiting integer into the claim as written, when the claim clearly does not contain it.”
[36] [2015] FCAFC 179; 240 FCR 85.
[37] [2022] FCA 495; 166 IPR 514.
[38] [2013] FCA 368; 101 IPR 11 (Ranbaxy Laboratories).
[39] [2009] FCAFC 70; 177 FCR 151 (Lundbeck).

The Applicant states that I may (and during submissions seemed to suggest that I should) disregard the expert evidence entirely in respect of construction issues[40]. While I agree that construction is not the role of the experts, it must be approached from the perspective of the person skilled in the art, so it is reasonable to use expert evidence to inform myself of the relevant background knowledge of the skilled addressee in order to properly construe the claims using the rules of construction.
[40] AS 19-20.
As a final note, the Applicant has taken the approach of addressing construction issues in the context of specific grounds[41], i.e., much of their discussion of the construction of certain phrases is in the context of distinguishing from the prior art (e.g., AS at 141) or in the context of Section 40 considerations (e.g., AS at 263c-f). While there may be practical reasons why this may be convenient (e.g., to help illustrate common general knowledge relevant to the task of construction or why certain interpretations may be unreasonable), there is no principle of construction that would authorise construing the specification in light of the prior art or in light of grounds of opposition. Any such attempt would risk impermissible glossing (e.g., if claims are construed with the intention of avoiding a citation) or circular reasoning (e.g., artificially narrowing scope to avoid support objections). Consequently, wherever practical I will try to separate the Applicant’s comments about construction from other considerations.
[41] AS at 41 on page 8.
Common General Knowledge - Principles
As noted above, construction is to be done in light of the common general knowledge (CGK). The Opponent refers to ICI Chemicals & Polymers Ltd v Lubrizol Corporation Inc[42], which stated at [111]-[112]:
“The notion of common general knowledge involves the use of that which is known or used by those who are in the relevant field or area. It forms the background knowledge and experience which is available to all in that field in considering the making of new products or making of improvements in old products. It must be treated as being used by an individual as a general body of knowledge – Minnesota Mining & Manufacturing Co. Pty Ltd v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 at 292.
The common general knowledge is the technical background to the hypothetical skilled worker in the relevant art. It is not limited to material which might be memorised and retained at the front of the skilled workers mind but also includes material in the field in which he is working which he knows exists and to which he would refer as a matter of course. It might, for example, include:
-     standard texts and handbooks;
-     standard English dictionaries;
-     technical dictionaries relevant to the field;
-     magazines and other publications specific to the field;” (Opponent’s emphasis)
[42] [1999] FCA 345; 45 IPR 577 (ICI).
The Applicant also has some comments on the nature of the CGK[43]. They note that mere publication does not make material CGK, citing Eli Lilly and Company Limited v Apotex Pty Ltd[44]
“Information does not constitute common general knowledge merely because it might be found, for example, in a journal, even if widely read by persons in the art: see Wake Forest University Health Sciences v Smith & Nephew Pty Ltd (No 2) (2011) 92 IPR 496; [2011] FCA 1002 at 514 [96], which referred to the decision of Luxmoore J in British Acoustic Films Ltd v Nettlefold Productions (1936) 53 RPC 221 at 250. The British Acoustic Films decision was affirmed in General Tire (1971) 1A IPR 121 at 135, and the following words of Luxmoore J at 250 were quoted with approval in Aktiebolaget Hässle v Alphapharm Pty Ltd (1999) 44 IPR 593; [1999] FCA 628 at 605 [39] (per Lehane J):
In my judgment it is not sufficient to prove common general knowledge that a particular disclosure is made in an article, or series of articles, in a scientific journal, no matter how wide the circulation of that journal may be, in the absence of any evidence that the disclosure is accepted generally by those who are engaged in the art to which the disclosure relates. A piece of particular knowledge as disclosed in a scientific paper does not become common general knowledge merely because it is widely read, and still less because it is widely circulated. Such a piece of knowledge only becomes general knowledge when it is generally known and accepted without question by the bulk of those who are engaged in the particular art; in other words, when it becomes part of their common stock of knowledge relating to the art.” (my emphasis),
and Ranbaxy Laboratories[45]
“Common general knowledge is knowledge actually known or used by skilled addressees generally, or accepted by “the bulk of those who are engaged in the particular art”: see British Acoustic Films Ltd v Nettlefold Productions (1936) 53 RPC 221 at 250. As the High Court emphasised in Aktiebolaget Hässle (2002) 212 CLR 411 at 426 [31], information cannot be treated as part of the common general knowledge unless there is “evidence of its general acceptance and assimilation” by persons skilled in the art.” (emphasis as per the Applicant submissions)
[43] AS at 51-53.
[44] [2013] FCA 214 at [468].
[45] Ranbaxy Laboratories at [215].
At the hearing, the Applicant also provided a copy of Gilead Sciences Pty Ltd v Index Pharmaceuticals LLC[46], which discussed ICI at [216]:
“I do not necessarily accept these submissions because they are expressed at a level of principle rather than proof in the particular case. Justice Emmett’s observations in ICI Chemicals are consistent with the authorities. Justice Emmett is not suggesting anything more than that the common general knowledge might include information in articles (etc) if the skilled addressee knows the article (etc) exists and would refer to it as a matter of course. In other words, what his Honour is allowing for is that the skilled addressee does not have to have instant recall of every matter for it to be common general knowledge. If the skilled addressee knows that certain information exists in an article (etc) and would refer to that document as a matter of course to refresh his or her memory about the details of that which the skilled addressee already knows in broad outline then those details might themselves form part of the common general knowledge. Justice Emmett is not suggesting that merely because the skilled addressee could locate a document and, having located it, could read and assimilate its contents, the document and its contents would form part of the common general knowledge. This would be inconsistent with Minnesota Mining, in particular, that the common general knowledge is the background knowledge and experience which is available to all in the trade. For the possibility which Emmett J recognised in ICI Chemicals to arise there would have to be evidence that the particular document was known and would be referred to as a matter of course by those in the field.” (emphasis on the portions the Applicant stressed at the hearing)
[46] [2016] FCA 169.

Common General Knowledge - Application
As something of a threshold issue, the Applicant advances that the CGK in the field of HPGR technology is not reflective of the CGK in comminution mills more generally[47]. As I understand the argument, they are suggesting that HPGR is a highly specialised technology field, and what might be well known to an expert of that field (such as Dr Daniel) may be obscure to an expert from the broader field of comminution mills.
[47] AS at 59.
The Opponent commented on this at the hearing, submitting essentially that the Applicant’s approach would lead to a narrow art comprising more CGK than the field it is within, which is at best counterintuitive. They submit that instead I should consider the CGK of the broader field as the accumulation of the CGK of the associated specialist fields. They also submitted that specialists would still be equipped to comment on the broader field regardless.
While I think there is an interesting debate to be had here, it would be largely moot, given that the Applicant themselves presented their own HPGR expert, Mr Knecht, as a suitable person skilled in the art. While the onus of demonstrating the obviousness in light of CGK lies with the Opponent, in practice my decision about what was or was not in fact CGK will be made on the balance of probabilities. Absent any evidence about what was (or was not) known in comminution rollers more generally, I must decide on the CGK on the basis of the evidence provided.
There is a reasonable degree of overlap between the parties as to the relevant CGK (at least as far as HPGR are concerned). The following points were accepted to be generally well known by both parties:
·Comminution mills comprising a pair of horizontal, counter rotating grinding rollers (sometimes referred to as “tires”) were well known in the art and are typical of HPGR systems[48].
·While there are different specific models, the common operating principle for HPGR is that one roller is “fixed”, and the other roller is “floating”. The floating roller is biased towards the fixed roller by hydraulics which maintain a certain pressure[49].
·The use of a fixed (but adjustable) pressure leads to the result that the milling gap between the two rollers is a function of the roller diameter, material flow rate, and composition of material passing between the rollers[50].
·In operation, the counterrotating rollers both crush and draw in material from above. The region above the milling gap where material is being compacted and drawn downwards is referred to as the “nip”[51].
·In operation, there is a tendency for some material to escape the nip region at the axial ends of the rollers, thereby bypassing the comminution action. In “traditional” HPGR, this is prevented by “cheek plates”, which are static plates covering the axial end of the nip region.[52]
·It was generally known that cheek plates were a (relatively) high wear part, which makes intuitive sense as they are exposed to high pressure abrasive loads.[53] It seems also accepted that part of the reason for the high wear of cheek plates is because they cannot develop an autogenous wear protection, as it would be constantly removed by the material being drawn into the milling gap[54].
·A known failure mode or wear pattern in HPGR’s was the so called “bath tub effect”, where the middle section of the roller would wear faster than the end regions. This was known to be related to uneven pressure distribution across the roller, with higher pressure in the middle[55].
·One well known partial solution to the bath tub effect was to put a set of wear resistant stud elements on the surface of the grinding rollers. These studded rollers (or “studded liners”, “studded tires”) would cause a portion of the granular material to become stuck to the surface of the roller, forming an “autogenous wear protection layer”, which could protect the roller surface itself from friction.[56]
·Typically, the rollers would be mounted in a rigid frame[57], although see my comment below.
[48] Daniel#1 at 31, Knecht at 21.
[49] Daniel#1 at 31, Knecht#1 at 21, 23.
[50] Daniel#1 at 124-126, Knecht#1 at 23.
[51] Daniel#1 at 128, Knecht#1 at 52.
[52] Daniel#1 at 43-44, Knecht#1 at 25.
[53] Daniel#1 at 45.
[54] Daniel#1 at 46-47, Knecht#1 at 49.
[55] Daniel#1 at 64, Knecht#1 at 33.
[56] Daniel#1 at 38-40, Knecht#1 at 29-30
[57] Daniel#1 at 31, Knecht#1 at 23.
There are then some points which may arguably be CGK but are more disputed. The following points appear to be tacitly accepted as well known, if not necessarily CGK:
·The Semi-autonomous grinding (SAG) Conference is a significant annual industry conference, which in 2015 was held in Vancouver[58]. At the 2015 conference, Metso presented details about their new HRC^TM 3000 HPGR unit, built and tested at the Morenci mine site. It was notable at the time as the world’s largest HPGR, and attracted considerable interest.[59] Note that here I am suggesting the Applicant tacitly accepts that the existence of the HRC^TM 3000 may have been well known, not necessarily its specific details (which I will discuss below).
·Regarding the machine frame of the HRC^TM 3000, Mr Knecht seems to imply that similar arch frame designs were known from “the early 2010s” in relation to other units from the HRC range[60] but also noted that the arch frame used in the HRC^TM 3000 was a prototype[61]. Taken together I take it this means such designs were previously known, but not at this scale.
[58] Daniel#1 at 57, Knecht#1 at 37
[59] Daniel#1 at 57-59, Knecht#1 at 55.
[60] Knecht#1 at 51-52.
[61] Knecht#1 at 58.
There is dispute between the parties as to if the HRC^TM 3000 can be regarded as CGK, or at least as to what details thereof may be CGK. Dr Daniel was apparently able to recall from memory that the HRC^TM 3000 used a grinding roller with flanges sized to cover the milling gap, thereby avoiding the need for cheek plates[62]. Dr Daniel was also able to recall that, in the flanged roll design, pressure was greater at the ends of the rollers, which would tend to combat the bath-tub effect[63]. I note that while Dr Daniel seemed to think this idea was either new to the HRC^TM 3000 (or at least not previously widely adopted), Mr Knecht seems to consider the idea of flanged rollers to combat bath-tub effect was known or explored earlier, albeit without commercial success[64].
[62] Daniel#1 at 56, 60-62.
[63] Daniel#1 at 68-69, 72.
[64] Knecht#1 at 33, 35.
The Opponent submits that the CGK includes what the experts could recall from memory and, in addition, supplementary materials that they would refer to as a matter of course[65]. In this case, they submit[66] that would include the Morenci papers, which comprise two papers: Design and Operation of the Metcalf Concentrator Comminution Circuit by M. A. Mular, J. R. Hoffert, and S. M. Koski (identified in the SGP as D1, also referred to as the Mular paper) and Building the World’s Largest HPGR – the HRC^TM 3000 at the Morenci Metcalf Concentrator by V. S. Herman, K. A. Harbold, and M. A. Mular (identified in the SGP as D2, also referred to as the Herman paper). At the hearing, the Opponent argued I should put particular weight on the fact that Dr Daniel had copies of the Morenci papers in his personal files, despite not attending the 2015 SAG conference in person[67]. They suggested this should be suggestive that the Morenci papers are the type of material which an expert would refer to “as a matter of course”.
[65] OS at 104.
[66] OS at 117.
[67] Daniel#1 at 57-58, 73-74.
The Applicant accepts that the Metso HRC^TM 3000 was a “hot topic” of conversation, but that to incorporate the full details of the Morenci papers as CGK is a step too far, and at most those details that the experts were able to recall from memory were CGK[68]. The Applicant also notes that while the CGK may reasonably include reference material an expert would turn to “as a matter of course”, Dr Daniel’s declaration seems to indicate that while he had the material available, he did not actually make reference to the papers until urged to do so by the Opponent[69].
[68] AS at 191-192.
[69] OS at 196-198.
On balance, while I am inclined to accept that general knowledge about the existence of the (at the time) world’s largest HPGR would have been quickly disseminated and assimilated into the CGK, I am less convinced that the detailed disclosure of the Morenci papers would have been so widely accepted as to be “part of their common stock of knowledge”. While attendees of the 2015 SAG conference (and those who intended to but ultimately did not, such as Dr Daniel) might have read and even kept copies of the Morenci papers, there is insufficient evidence that these details would have been more widely disseminated, let alone accepted. Consequently, I will leave more detailed analysis of the Morenci papers for the novelty and inventive step sections.
Construction - Application
There are several terms used in the claims which are the subject of some debate.
A milling gap is configured between the opposing grinding rollers
The Opponent advanced that the use of “configured” in this phrase was problematic. I will expand on this point under “Clarity”, but it will suffice for now to say that I understand “configured” when used in this context to mean essentially the roller mill is set up and operated in such a way that there will be a milling gap between the grinding rollers.
A peripheral element
Throughout their submissions, the Opponent has interpreted “peripheral element” (singular) as synonymous with “flange”[70]. Dr Daniel[71] and Mr Knecht[72] appear to read it the same way.
[70] OS at 34.
[71] Daniel#1 at 133.
[72] Knecht#1 at 104, also uses the term “annular wall”.
The Applicant argues that while flanges are one form of peripheral element, the term is broader than just flanges[73]. They point to the background section of the specification, which provides:
“In order for the lateral outflow of ground material from a milling gap configured between the grinding rollers of a roller mill to be influenced in a controlled manner it is known
for peripheral elements to be disposed on one of the grinding rollers. Such a roller mill
having peripheral elements is known from utility model DE 20 2014 006 837 U1, for
[73] AS at 30.
[74] Specification page 1 line 15-19.
example.”[74]
The Applicant argues that “peripheral elements” is an unusual term or at least not “a term of art” and as such the extract above should be read as the specification “adopting” the term “peripheral elements” as used in DE202014006837U1 (listed in the SGP as D10) [75].
[75] AS at 73-76.
Very briefly, D10 describes a comminution roller provided at its axial ends with a segmented annular disk (of the type apparently known at the time, which I understand to be essentially a segmented flange, but which D10 refers to as an annular disk or ring), for which there was a known problem of the elements being forced outwards and breaking[76]. D10 teaches the use of peripheral elements made up of several segments, where some of the segments do not cover the milling gap and allow a portion of material to flow axially in a “controlled manner” to reduce pressure on the segments[77]. The translation is not entirely clear, but it appears the gaps in the annular ring may be formed by intentionally weakened segments that break at a certain pressure[78] (and hence control the axial outflow of material).
[76] Translation of D10 provided by Espacenet, as provided with the SGP, at [0002]-[0004].
[77] D10 at [0008].
[78] D10 at [0010], [0012], although this may only refer to a preferred embodiment.
At the hearing, the Applicant was keen to suggest that the peripheral element(s) are to be understood with respect to their purpose of controlling axial outflow of material, as opposed to preventing axial outflow of material[79]. The Applicant argues this purpose, combined with the reference to D10, would lead the person skilled in the art to understand “peripheral element(s)” was significantly broader than flanges.
[79] Specification page 1 line 16.
As a first point, I am not persuaded that D10 is of any assistance in construing the term “peripheral element”. While not impossible, it would be unusual for a specification to rely on an external source to provide a definition of a significant component of the invention, and consequently I would not read the reference to D10 as an external dictionary definition unless the words of the specification made that intention unambiguously clear. In addition, even if I were minded to look to D10 for a definition, D10 does not use the term “peripheral element” (as far as evidenced by the available machine translation). Rather, D10 uses the phrase “wear protection elements” with “radially extending portions”. Finally, I note the principle is that claims are construed in light of the specification and CGK, not the prior art (acknowledged or otherwise).

While the term may be “unusual” in the sense of not being a defined term in the art, the plain meaning of the words “peripheral element” as used in the claim is simply element(s) arranged around the periphery of the end of the roller – which in plain English is a flange. If there was any ambiguity in the term, the specification makes it reasonably clear that peripheral elements are flange-like elements, with no alternatives described.
There was also a related construction issue regarding “peripheral elements” (plural). The Opponent understood this to refer to where there are flanges at both ends of a roller (as exemplified by Figure 1) or each roller provided with one flange (as exemplified by Figure 2). The Applicant argued it should be read more broadly, as incorporating peripheral elements as shown in D10. As discussed above, I do not accept the incorporation of D10 into the definition of peripheral elements, however I note the specification does disclose, at least in Figure 3, as shown above, that the peripheral element may comprise multiple segments (flange 20 of Figure 3 is clearly segmented). As such I consider it is reasonable to conclude “peripheral elements” may refer to either two flanges or a plurality of segments making up one (or more) flange(s).
The scraper element is attached to a machine frame at which the grinding rollers are mounted
The Opponent suggests this is to be read broadly, with “machine frame” referring to essentially all parts of the roller unit apart from the roller shafts and bearings[80] and “attached” encompassing both direct and indirect attachment[81].
[80] OS at 68, citing Daniel#2 at 9.
[81] OS at 65 citing Daniel#1 at 152.
As noted above, the Applicant’s comments related to this are mixed with their assessment of the citations[82]. They tacitly accept that Mr Knecht initially arrived at the same construction as the Opponent proposes[83], but observe that he was quick to note the specification describes a stationary machine frame[84]. I take this to mean the Applicant considers “machine frame” should be construed as the fixed structural elements of the roller unit (i.e., excluding moving parts). They also make express reference to “the specific machine frame element [described in the specification], which extends substantially in the axial direction of the grinding rollers, to which the scraper(s) is/are attached”[85] and elsewhere that the invention involves a scaping element attached to a particular frame element[86].
[82] AS at 139-150
[83] Knecht#1 at 112
[84] AS at 140, citing the specification at page 9 line 18 to page 10 line 6.
[85] AS at 140.
[86] AS at 107.
Overall, I consider that “machine frame” may be generally understood as a functional definition, being all of the structural/load bearing elements of the machine. It does not include components such as the bearings or roller shafts, as those components perform their own specific functions. In situations where elements may have dual purpose, such as the bearing blocks which contain the bearings but may also be used as a structural support element for other components, I would consider on a case-by-case basis (if needed) if they form part of the machine frame or not.
The Applicant has not made any specific comments about the concept of indirect attachment between the scraper element and the machine frame, so I will presume that they accept “attached” is to be read inclusive of indirect or intermediary attaching elements. I also note this is consistent with the preferred form of the invention, with the scraper element attached to the machine frame via an arm.
The scraping element is held stationary relative to the grinding rollers
At the hearing, there was some debate about the limits of “stationary” in this phrase.
As a first point, I note this phrase is an example where overly literal analysis should be avoided. The literal interpretation of this phrase would be that the scraper and grinding rollers do not move relative to one another, which conjures an image of the scraper element rotating together with the roller (until inevitably being crushed). Such an interpretation must be rejected as absurd. Similarly, to the extent that it refers to being stationary to the grinding rollers (plural), since it seems well established that the rollers are not stationary in respect to each other (i.e., counter rotating and a dynamic milling gap), a construction that the scraper is somehow stationary relative to both rollers must also be rejected.
The parties have submitted there are broadly two possible interpretations of this phrase. The first would be that the intention was simply to distinguish between the rotating grinding roller and the scraping element such that the scraping element is held non-rotating relative to the grinding rollers. The problem with this interpretation is that it is potentially a redundant feature, as it appears synonymous with the operation of the scraper. The second would be that the intention was more absolute, that the scraper is fixed practically immovable in a particular point relative to the machine frame and roller.
The submissions from the Applicant on this point have not been entirely straightforward. In places, it seems the Applicant advocates for the first meaning[87], but elsewhere suggests it should be read in a way that would exclude spring biased or resilient mountings[88], so that they read this feature as requiring the distance between the roller and scraper to be fixed, which is closer to the second meaning. The Opponent advocates for the first meaning[89].
[87] AS at 101, quoting the specification discusses “stationary relative to the rotatable grinding rollers so that the grinding rollers rotate relative to the scraping element” and AS at 215(c) “simply stipulate that the scraper is held in place during rotation of the scraped roller”.
[88] AS at 152, quoting Knecht#1 where he suggests that while the resilient mounting of D3 could be used in the Morenci papers, it would not be held in a “fixed manner”.
[89] OS at 101-102, quoting Daniel#2 at 206-207.
The Macquarie Dictionary[90] gives the definition of “stationary” (when used as an adjective) as:
“1. Standing still; not moving.
2. having a fixed position; not moveable.
3. established in one place; not itinerant or migratory.
[90] The Macquarie Dictionary, 8^th ed.2022, remaining in the same condition or state; not changing.
The plain meaning generally suggests “stationary” is read as opposed to “moving”. The feature is read in light of the purpose of the scraper element, to remove a portion of material from the surface of the roller, which necessitates the scraper be held substantially non-moving as the roller rotates. I see no reason to depart from this construction. I note that while the specification does not disclose or teach towards a spring bias mounting, a construction excluding such a system would be unnecessarily glossing in limitations.
I construe this phrase as meaning that the scraper element is held substantially non-moving relative to the grinding rollers.
Disposed at a location above, in a radial direction of the grinding roller, the axial end of the grinding roller.
There was tacit agreement at the hearing that the construction of this point may be determinative for this case, so it is worth considering carefully.
The Opponent submits that the phrase may simply be unclear, noting that both experts expressed uncertainty about the phrase[91]. The Opponent then goes on to adopt Dr Daniel’s comments on construction of this phrase[92].
[91] OS at 49, Daniel#1 at 155, Knecht#1 at 120.
[92] OS at 50-56.
Dr Daniel suggested that there are two ways of interpreting this phrase. The first possibility is that it is read as a location “vertically above” or “vertically higher than” the grinding roller[93]. In support of this interpretation, he refers to Figure 3 of the opposed application, which shows the scraper element mounted essentially directly above a grinding roller, but he goes on to imply that this meaning of “above” would include essentially any positions on the upper half of the roller (he introduces the clock terminology of positions between 3 and 9 o’clock as “below”[94]). However, Dr Daniel notes this would essentially ignore the words “in a radial direction”. This leads to the second interpretation, that the phrase could be read as a location “spaced outward from” or “radially outward” the surface of the roller[95]. Dr Daniel likens this to clouds “above” Antarctica[96]. In comparing the two options, Dr Daniel makes the note that there is an important technical effect associated with placing the scraper radially spaced from the surface of the roller (that the scraper does not remove the autogenous layer), but no clear technical effect associated with being vertically above the roller[97]. Consequently, Dr Daniel prefers the second interpretation, being “radially above”.
[93] Daniel#1 at 159-160
[94] Daniel#1 at 165-166
[95] Daniel#1 at 164
[96] Daniel#1 at 166
[97] Daniel#1 at 167, 169, 171
Broadly, the Applicant urges caution against relying upon either expert for matters of construction, as ultimately construction is a matter for the Commissioner and the courts, not experts. The Applicant’s more detailed comments on construction are somewhat piecemeal: after establishing the relevant construction principles at paragraphs 10-20, the Applicant then merely states this will be applied during the discussion of other issues[98].
[98] AS at 41 on page 8, noting there is an error in this paragraph’s numbering.
With this in mind, the Applicant seems to adopt the same position as Mr Knecht[99]. Mr Knecht states:
“I tend to agree with [Dr Daniel’s] interpretation, for very much the same reasons he puts forward: It is not clear in and of itself what the expression a scraper positioned ‘radially above’ the roller mean”,[100]
and then goes on to say that:
“it would make sense that it seeks to describe an arrangement wherein the scraper is ‘above’ the surface of the roller at the end that has a flange, in the sense of being located radially outward from, and separated by a radial gap from, the surface of the roller.”[101]
[99] AS at 155-161
[100] Knecht#1 at 120.
[101] Knecht#1 at 123.
Mr Knecht goes on to criticise what he describes as Dr Daniel’s “close linguistic dissection” of the phrase[102]. While I do agree that in places Dr Daniel does descend to that type of analysis[103], in regard to this feature in my opinion Dr Daniel’s discussion at 160-164 of Daniel#1 is simply trying to give any meaning to the words “in a radial direction”. Mr Knecht also suggests that there is a problem with the “radially above” interpretation, in that it would cover arrangements not described by the opposed specification[104], and he consequently proposes a third interpretation:
“Perhaps an interpretation of feature 1(viii) which covers both the scraper being above the roller surface at the flanged end as well as being mounted to a machine frame part (i.e. the beam 40 of figure 3) that is located above the roller being scraped, is the only correct one.”[105]
[102] Knecht#1 at 124.
[103] For example, his interpretation at 141 of “at least partially cover an axial end” as “only to a minimal or tiny extent” is grammatically sound, but not particularly practical.
[104] Knecht#1 at 124.
[105] Knecht#1 at 125.
Unfortunately, I think Mr Knecht has fallen into a textbook trap of “glossing in” features of the preferred embodiment, such as the frame part located above the roller. His motivation was clearly to read the claim in a manner to match the preferred embodiment, which is a normal and understandable approach for a technical expert seeking to understand the invention, but is precisely the course the courts warn against. This third interpretation must be dismissed.
Briefly, I should note a slight issue that arose during the hearing. In the Applicant’s original Summary of oral submissions, page 59 included what the Opponent characterised as a significant concession. In the original, page 58 ends with setting out Mr Knecht’s proposed third construction, with the Applicant stating that the correct construction is one which is closer to this third interpretation. This was then followed by a statement in paragraph [217] on page 59 that “This is despite the fact Mr Knecht indicates that such location [referring to 10:30-11 o’clock position] to be unlikely and for a number of reasons unsuitable.” The Opponent submitted that this concession makes these positions an unsuitable construction. At the hearing the Applicant provided a replacement sheet (I will refer to it as page 59a) which provided additional comments and replaces the language at the beginning of paragraph [217] with the words “We submit the above construction is appropriate” and then recasts Mr Knecht’s comments as being indicative of inventive step. The Opponent was concerned about this reversal of opinion. However, since I concluded above that Mr Knecht’s construction was impermissibly restricted, nothing turns on the Applicant’s submissions that follow from that construction. I also note that the last-minute change was a change of submissions, not a change of evidence.
The starting point is the plain meaning of the words of the claim. The phrase “above, in the radial direction” defines a relative position, “above”, which Macquarie Dictionary defines (among other definitions) as “in or to a higher place; overhead”. This is then qualified by the parenthetical phrase “in a radial direction.” Since no particular radii is identified, the qualifier is read to refer to any radii of the roller, i.e., anywhere around the circumference of the roller. The plain meaning of the full phrase would be essentially synonymous with “disposed at a location higher in the radial direction than the axial end of the grinding roller” (or for brevity, “radially above”). While the claim does not give any limitation to how much higher the location is, when read in light of the specification, this is consistent with the aim of preserving the autogenous layer and avoiding unnecessary wear of the scraper. There is nothing from the specification (or evidence) which would suggest this is either an absurd or unreasonably restrictive construction, and there is no evidence which suggest that there was some special agreed meaning of the term in the art. I see no reason to depart from the plain meaning of the words.
Located over the relevant end region of the grinding roller
At the hearing, it was generally presented that I may treat claim 12 as being essentially “the same thing” as claim 1, and the Applicant accepted that claim 12 will “follow the same ‘fate’ of claim 1.”[106] However, I note claim 12 is drafted differently; in particular the equivalent of feature 1(viii) is 12(v), which is worded as “located over the relevant end region of the grinding roller.”
[106] AS at 166.
The Opponent has made a number of comments about the clarity claim 12, which I will address in more detail below, but they did not present any specific position on the construction of “over” in this claim.
To me this phrase is markedly distinct from the “above, in a radial direction” language of claim 1. Over, in its plain meaning in this context, would mean above or on top[107]. Similar to my comments above, I see no reason to depart from the plain meaning of the words.
[107] The Macquarie Dictionary provides 63 definitions, but the most relevant to this point are definitions 1 (above in place or position), 4 (on or upon, so as to rest on or cover), and 5 (on or on top of).
Section 40(3) - Clarity - Principles
Before turning to more substantive issues, it is useful to discuss clarity to resolve (where possible) any ambiguities in scope. Subsection 40(3) of the Act states:
“(3) The claim or claims must be clear and succinct and supported by matter disclosed in the specification.”
Regarding clarity, the Opponent cites[108] BlueScope Steel Limited v Dongkuk Steel Mill Co., Ltd (No 2)[109] at [705]:
“A valid claim is required to define with sufficient certainty the scope of the monopoly being claimed. Given that a patent is a public instrument, the claim must be defined in such a way that it is not reasonably capable of being misunderstood so that others know the ‘exact boundaries of the area within which they will be trespassers’: Electric & Musical Industries Ld v Lissen Ld (1939) 56 RPC 23 at 39 per Lord Russell of Killowen. A claim will lack clarity if a person skilled in the relevant art cannot ascertain whether what he proposes to do falls within the claim’s ambit.”
[108] OS at 141.
[109] [2019] FCA 2117; 152 IPR 195, the Opponent also refers to Meat & Livestock Australia Ltd v Cargill, Inc [2018] FCA 51, (2018) 354 ALR 95 (Meat & Livestock); which includes essentially the same comments at [932].
The Opponent also cites[110] Albany Molecular Research Inc v Alphapharm Pty Ltd[111] at [174]:
“With respect to AMR’s submission summarised in para 166 above, I accept that, from a verbal or grammatical viewpoint, the expression ‘substantially pure’ is not unclear. I accept also that ‘any purely verbal or grammatical question that can be resolved according to ordinary rules for the construction of written documents, does not, once it has been resolved, leave uncertain the ambit of the monopoly claimed’: Welch Perrin and Co Pty Ltd v Worrel (1961) 106 CLR 588, 610. But the concern of s 40(3), in my view, is not confined to such matters. The purpose of a claim is to define the invention (s 40(2)(b)), and it is in that context that the requirement of clarity is to be considered. In my view, that requirement is that a claim must clearly define the invention, so far as it relates to the matter claimed. A claim which is a model of verbal or grammatical clarity may nonetheless fail the test of this requirement if it leaves the definition of the boundaries of the invention uncertain or variable” (emphasis added).
[110] OS at 142.
[111] [2011] FCA 120.
Both parties agree[112] with the guidance from Martin v Scribal Pty Ltd[113] at page 59:
“It is open to the Court to conclude that the terms of a Specification are so ambiguous that its proper construction must always remain a matter of doubt, and in such a case, even if the Specification had been prepared in perfect good faith, the duty of the Court would be to declare the Patent void” (emphasis added).
[112] OS at 140, AS at 222.
[113] [1954] HCA 48; 92 CLR 17.
The Applicant cites Flexible Steel Lacing Company v Beltreco Ltd[114] at [81]:
“It is permissible for an invention to be described in a way which involves matters of degree. Lack of precise definition in claims is not fatal to their validity, so long as they provide a workable standard suitable to the intended use. The consideration is whether, on any reasonable view, the claim has meaning. In determining this, the expressions in question must be understood in a practical, commonsense manner. Absurd constructions should be avoided and mere technicalities should not defeat the grant of protection” (citations omitted, emphasis added).
[114] [2000] FCA 890; 49 IPR 331.
Section 40(3) - Clarity - Application
Claim 1
The Opponent’s submissions regarding lack of clarity for claim 1 are primarily that, in the event I disagree with the construction of Dr Daniel, the claim must be unclear[115]. More specifically, they submit that feature 1(viii) is unclear as both experts regarded the feature as unclear or ambiguous[116]. The Applicant submits that the experts were able to arrive at a meaningful construction and therefore the claim satisfies the workable standard test, even if the constructions were not the same[117].
[115] OS at 143.
[116] OS at 49.
[117] AS at 226.
Given I ultimately arrived at essentially the same construction as Dr Daniel for this feature, I take it the Opponent is otherwise not contesting the clarity of this feature of claim 1. For the avoidance of doubt, while there are points which could have been clearer I consider that feature 1(viii) provides a sufficient workable standard and is clear.
Claim 5

The Opponent then makes submissions regarding claim 5. For reference, claim 5 states:
5. The roller mill as claimed in any one of the preceding claims, wherein the roller
mill comprises two of said scraping elements which are respectively disposed radially
above opposite ones of the axial end regions of the grinding rollers.
The Opponent argues there are several problems with this, largely adopting the comments from Dr Daniel[118]. Since Dr Daniel is a technical expert, he has mixed together his comments on construction, clarity, and support.
[118] OS at 145, citing Daniel#1 at 184-186.
Dr Daniel proposed that since claim 5 requires two scrapers, it implicitly requires there to be a flange at each end of the roller mill, as he cannot see any purpose in a scraper at locations other than the flanged end[119]. He suggests that this implication “makes sense” for claim 5. He then appears to infer that this must mean other claims are not limited to having a flange at each end. He considers that to be a problem (presumably a support issue) as there is no disclosure of how a mill with a flange at only one end “could be made to work.” However, he then immediately follows these observations with the comment that it is not clear what claim 5 means if there is only a flange at one end[120], which would suggest he does not regard claim 5 as implicitly requiring the feature. Dr Daniel then notes that the wording of “opposite ones of the axial end regions of the grinding rollers” (plural) suggests that the two scrapers must be located on opposite rollers. He suggests that this would be clear in respect to embodiments of the type shown in Figure 2, but not for embodiments as shown in Figure 1.
[119] Daniel#1 at 184.
[120] Daniel#1 at 185.
To separate out these concerns, I will begin with construction. At the outset, it must be said the claim drafting is less than ideal, although that is not fatal in itself. The claim clearly requires two scraping elements that are each disposed “radially above” in the same sense that I construed for claim 1. The problematic portion is “opposite ones of the axial end regions of the grinding rollers.”
“Opposite ones” could refer to the “axial end regions” or to the “grinding rollers”. I think part of Dr Daniel’s confusion has come from trying to read “opposite” as applying to both end regions AND rollers (i.e., I think he reads it as “opposite ends of opposite rollers”, which he then associates with Figure 2).
The Applicant’s submissions on this point seem to be that the “s” at the end of “grinding rollers” was a typographical error[121], i.e., the intention was “opposite ones of the axial end regions of the grinding roller.” This point was expanded on at the hearing, where, after some discussion, it became clear the intention had been that “opposite” was associated with the axial direction only, not between rollers, such that the phrase should read “at one end region of the axially opposite end regions of the rollers.” The argument also seemed to be that an end region of one roller may be regarded as “opposite” an end of the other roller, if the ends in question are at axially opposite ends of the mill. The concept the Applicant seems to have been aiming for is that the phrase should read as something like “disposed at opposite axial ends of the roller mill and radially above end regions of the or each roller”. The submissions imply this would be inclusive of the Figure 2 configuration, but not limited to it, but I struggle to follow how that is consistent with the alleged typographical error - either the claim refers to a plurality of rollers, or it does not.
[121] AS at 229.
After having the benefit of the Applicants submissions and discussion, I follow the Applicant’s intent, but between the unfortunate typo giving some ambiguity as to what roller(s) are being referenced, and the ambiguity as to what “opposite” was in reference to, I would not have arrived there without assistance. Consequently, I consider the claim as currently drafted does not provide the requisite workable standard and is unclear.
Regarding the question about peripheral elements at opposite axial ends of the griding roller, it will suffice for the moment to note that the claim makes no express statement of this, and I consider it would be impermissibly narrowing the scope of the claim to import this limitation from the description. For the purposes of the remainder of this decision, I will interpret claim 5 as requiring two scraper elements, one scraper located radially above an axial end of a grinding roller proximate an annular flange as required by claim 1, and the second scraper located radially above either roller and axially distal from the first scraper.
Claim 12
Regarding claim 12, the Opponent refers to “numerous grammatical problems” with the claim[122], in particular regarding feature 12(iv) and the phrase “at least one of the grinding rollers comprises at an end region of opposite axial ends of the rollers a peripheral element.” Similar to claim 5, the apparently careless combination of singular and plural nouns causes some issues. The Opponent submits that the phrase seems to be referring to a singular peripheral element that is somehow simultaneously at opposite axial ends of a single grinding roller and/or present on both rollers[123].
[122] OS at 147.
[123] OS at 148.
The Applicant’s response to this was brief, merely noting that the specification should be read as a whole without “over-meticulous dissection” of the claim language[124].
[124] AS at 230.
While I agree with the Applicant there is danger in over-analysis of these points, some analysis is required here. As the Opponent notes, the literal meaning of the claim seems to have a single peripheral element in a plurality of distinct locations. This interpretation is clearly absurd and must be rejected, but having done so it is not clear what remains. If “opposite” is associated with a single axial end, it is not clear what it is opposite to. If it relates to a pair of axial ends, what is the meaning of “an end region of opposite axial ends”? Is it an end region encompassing both ends? This would repeat the problem of a single peripheral element located in multiple places. Possibly, the intention was “at one axial end ~~region~~ of the opposite axial ends” (i.e., equivalent to “at one axial end”), but this would require essentially redrafting the claim based on speculation, and I am particularly reluctant to assume this particular error, because as noted above the specification assigns special meaning to an “end region”.
Looking to the rest of the claim, I also note that the Opponent also takes issue with feature 12(v) and the phrase: “removing at least partially material from that one of the axial end regions of the grinding rollers that comprises the peripheral element”. Dr Daniel had significant problems reconciling this portion with the preceding portion[125]. Again, the drafting is less than ideal. It anticipates that there is a plurality of rollers with a plurality of “axial ends regions” (note the distinction from both “end regions” and “axial ends”), and defines removing at least a portion of the material from one of these axial end regions, where it is “that one” axial end region provided with “the” peripheral element.
[125] Daniel#1 at 212-214.
When these two parts of the claim are read together, it implies the first iteration of “an end region” may have been intended as “an axial end region of opposite axial ends regions”. However, while as noted above the specification appears to give particular meaning to an “end region”, the body of the specification never uses the phrase “axial end region”.
Overall, it is apparent there was some error in drafting (at the hearing the Applicant implied there may be translation errors), but in trying to determine the specific error and real intention of the claim I would be reduced to speculation. It follows that the claim as currently drafted does not meet the requisite workable standard, and therefore is not clear.
For the purposes of the remainder of this decision, I will interpret claim 12 as being essentially directed to a method for operating a roller mill according to claim 1 (which is how both parties treated the claim for novelty and inventive step) with the distinction that in claim 12 the scraper is located over the end region as I have construed it above.
Summary
In summary, claims 5 and 12 are unclear, but the remaining claims do not lack clarity for the purposes of s40(3).
Section 40(3) - Support - Principles
In addition to the requirements that the claims be clear, section 40(3) requires that the claims must be supported by matter disclosed in the specification.
Both parties seem in agreement[126] that the correct principles are those set out in Merck Sharp & Dohme Corporation v Wyeth LLC (No 3)[127]. The process may be summarised as:
·construe the claims to determine the scope of the invention as claimed,
·construe the description to determine and ascertain the technical contribution to the art, and
·decide whether the claims are supported by the technical contribution to the art.
[126] OS at 159, AS at 234-237.
[127][2020] FCA 1477 at [546]-[547], citing with approval CSR Building Products Ltd v United States Gypsum Company [2015] APO 72.
Section 40(3) - Support - Application
I have construed the claims in depth above. Regarding the technical contribution to the art, the Opponent submits that the technical contribution lies in:
“a HPGR that has peripheral elements (flanges) to prevent bypass of material at both ends of the mill, which are subject to less stress by using scrapers that are spaced from the roller surface so as to preserve the autogenous layer.”[128]
[128] OS at 161.
The Applicant rejected this characterisation, instead submitting that the technical contribution lies in:
“providing, in a double grinding roller mill, a scraper that is so located and supported at a machine frame component of the mill so as to scrape-off and/or maintain a predetermined autogenous layer of ground material in an end region of a grinding roller that has a peripheral element (flange), wherein such material removal results in preventing a built-up of ground and backed-on granulated material beyond an amount that could lead to increased stress and wear of the flange.”[129]
[129] AS at 239-241.
The difference between these statements is largely a matter of emphasis. Both include the peripheral element(s), and the operation of a scraper to remove material adjacent to the peripheral element. The Opponent’s characterisation emphasises the peripheral elements as a part of the technical contribution, but the Applicant’s characterisation appears to regard the peripheral element as part of the context of the technical contribution. In my opinion, the Applicant’s characterisation should be preferred. As noted above, the specification makes clear that the general concept of rollers with peripheral elements/flanges was already known. The specification is reasonably clear that the contribution is more specifically associated with the scraper elements themselves and the use of said scraper elements to remove a portion of material adjacent the peripheral elements. Phrased differently, the (alleged) technical contribution is associated with a component of the grinding roller system, being the scraper element and its operation/configuration.
Claim 1
Turning to the claims, the Opponent submits that since claim 1 includes embodiments where there is only a single flange, this would be inconsistent with the technical contribution because the HPGR unit simply will not work without flanges at both ends[130]. The Applicant’s written submissions do not answer this directly (other than refuting the characterisation of the technical contribution as discussed above), but at the hearing the Applicant made the analogy that if the invention is an improved suspension assembly, there is nothing wrong to a claim for a car with said suspension assembly – there is no requirement to also define the motor.
[130] OS at 164-166.
Given my position regarding the technical contribution, I am not satisfied that the failure to define the second peripheral element is unjustified. The technical contribution lies in the provision and configuration of the scraper element adjacent to the peripheral element, which is defined by the claims.
As a second limb of their objection to claim 1, the Opponent submits that the wording of “at least partially removing material from the grinding roller” is inclusive of removing all of the material, which would remove the autogenous layer, which the Opponent regards to be essential to the operation of the HPGR[131]. The Applicant’s response to this was that when the claim is read as a whole, it is clear the scraper only removes material from the axial end region adjacent the flange[132]. In the first instance, I think the Applicant may have slightly misunderstood the Opponent’s point. I understood the Opponent to be making the case that the scraper may remove the full depth of the autogenous layer in the end region, exposing at least that portion of the roller to unacceptable wear. Whether the rest of the surface is also exposed or not is not critical to the Opponent’s argument. The Applicant elaborated the point at the hearing, stating, that while studded liners and autogenous layers are now standard practice (or at least well known), non-studded rollers exist which do not utilise autogenous wear protection (it seems these are mostly older designs, but the Applicant argues that is not relevant).
[131] OS at 168.
[132] AS at 245.
As far as claim 1 is concerned, given my construction that “above, in a radial direction” reads as radially above or radially spaced, it follows that the scraper is distanced from the surface and will only be able to remove a portion of the material. As such I consider the Opponent’s concerns about completely removing the autogenous layer are unfounded.
While it is under the heading of enablement, the Opponent also submits with regard to feature 1(iv), that the “peripheral element configured to extend across the milling gap and at least partially cover an axial end side of the opposite grinding roller” is not supported by the specification as there is no explanation as to how large the flange must be[133]. The Applicant’s written submissions did not respond directly to this under the heading of support (or enablement), but they do note elsewhere that the answer is “obviously to an extent required to minimize material exiting the milling gap in axial direction of the grinding rollers”[134]. If this was intended to be the answer to the support/enablement question, it is a somewhat flippant one, but not unreasonable.
[133] OS at 181
[134] AS at 240, commentary added in square brackets within the quoted portion of the specification.
It would have been reasonably clear to the skilled reader that the purpose of the flange is essentially the same as the traditional cheek plates, to contain axial outflow of material. With that purpose in mind, it seems obvious that the “partial cover” of the flange should extend upwards from the milling gap to cover the nip region (and downwards by the same margin, but that seems incidental). While it is possible to read the claim as defining less overlap than this[135], such a construction ignores the only purpose of the peripheral elements. I am not satisfied that the “at least partially cover” feature extends the scope beyond the technical contribution.
Claim 12
[135] Daniel#1 at 141 did make such a construction, despite immediately understanding it would not work.
As noted previously, the parties seemed to consider that in many respects claim 12 would follow claim 1. However, noting that I construed claim 12 differently, the Opponent’s arguments have more force with claim 12. Since I construe “over” as vertically above, the “removing at least partially” from claim 12 may include removing all of the built-up material (in the end regions). To the extent the claim could refer to non-studded rollers, I note the problem being addressed by the Application is the excess pressure adjacent the peripheral elements, which both experts attributed to excess build-up of material in the axial end regions[136]. There is no evidence that this problem even exists for non-studded rollers. Having said that, there is also no evidence non-studded rollers would not experience the same problem.
[136] Daniel#1 at 69, 72; Knecht#1 at 66, note that Mr Knecht understood that when Dr Daniel referred to “excessive” material he meant over and above the autogenous material.
On balance, the evidence indicates the excessive pressure is attributed to the material in the end region being more “confined” as it cannot move axially during the crushing action, which tends to make more material stick to the roller in those end regions. Without any evidence to the contrary, such a problem would seem to exist in both studded and non-studded rollers. With non-studded rollers, which do not have an autogenous wear layer, the “excessive” material is all of the material stuck to the roller. It follows that there are circumstances where it would be desirable, and consistent with the objectives of the Application, to use the scraper arrangement claimed to remove all of the material from the roller surface.
Consequently, I am not satisfied that it has been shown that the scope of claim 12 exceeds the technical contribution to the art, and consequently I cannot find claim 12 lacks support.
Claim 4
Claim 4 is appended to claim 1 (or 2 or 3) and introduces the feature that the spacing between the scraping element and the peripheral element and/or the spacing between the scraping element and the axially end region of the grinding roller “can be selectively set”.
The Opponent argues that this is simply not disclosed by the specification at all[137], and inherently traverses beyond the technical contribution. Initially the Applicant’s response to this was to treat it as in fact an enablement objection, and argue that the person skilled in the art would be equipped with their own technical knowledge to enable the feature[138]. The Opponent disputes this, noting that Dr Daniel suggests that a considerable amount of analysis and testing would be needed to devise a reliable setting means[139]
[137] OS at 169.
[138] AS at 246, quoting Middleton J in Product Management Group Pty Ltd v Blue Gentian LLC (2015) 116 IPR 54 at [38]: “A skilled addressee would know how a garden hose works and how it is used and this knowledge must be applied in the construction of the claims. ”
[139] OS at 170, quoting Daniel#1 at 180.
Briefly, I note that, while the specification does not use the same language, it does refer generally to “A spacing that is capable of being set”[140]. No specific details are provided as to how this is to be achieved.
[140] Specification at page 4 line 5-24.
There is often a contention that where a broader claim is found to be supported (i.e. not broader than the contribution to the art) it must follow that narrower claims are also supported. I do not think that is of universal applicability, but in the present case it has merit. The Opponent had no qualms about the nature of the mounting of the scraper in claim 1, which the specification exemplifies as being bolted to an arm. Dr Daniel’s concerns were that he would need to conduct FEA analysis and testing to devise setting means, but it would seem like that would apply equally to the arm and mounting bolts of Figure 4. Given the stresses involved in HPGR systems, it would seem to me that these types of analysis and testing are part of the routine, non-inventive work that a person skilled in the art would be expected to perform in their work.
Overall, I am not satisfied that any of the claims lack support.
Section 40(2)(b)

I note that, given the submissions from the Applicant indicate they thought the feature equivalent to claim 1, the fact it is not equivalent raises the question of if it is even an essential integer. There was nothing in the specification which identified any particular advantage associated with the scraper being located vertically above the roller and, as noted above, the experts did not seem to identify any benefit to such a position. However, it can be seen from Figure 3 of the Application that for the particular configuration of the roller mill in the preferred embodiment, there is implicitly an advantage to the scraper being mounted on the top side of the roller – it is a convenient location to attach to the machine frame. While that may not be the case for all machine frames, it is so for at least those exemplified in the figures. This suggests to me that while the advantage may be limited, there is a purpose to the feature, and as such I cannot discard it as inessential without strong reasons.
I cannot find that the invention defined by claims 12-13 lacks an inventive step over the combination of D1, D2, and the CGK.
Dependent claims
The Opponent’s submissions on the dependent claims are that claims 2-3, 5, and 11 are disclosed by the combination of D1 and D2 for the reasons set out by Dr Daniel[211], and further that claims 5 and 7-9 are obvious in light of the combined disclosure of D1, D2 and the CGK[212].
[211] OS at 93-95.
[212] OS at 126-128.
The Applicant concedes that should claim 1 be anticipated, claims 2-3 shall also be disclosed by the combined disclosure of D1 and D2[213], and, regarding inventive step, the Applicant seems to rely entirely on their submissions directed to claim 1. Regarding claim 5, the Applicant submits that it is not disclosed by D1 and D2, but concede “it may be an obvious conclusion to draw”[214]. The Applicant did not provide detailed written submissions on claims 7-9 and 11, but stated that they reserve the right to discuss them at the hearing. Ultimately, they relied upon the written submissions, which I take to mean they concede the point on these claims.
[213] AS at 162. I note they include claim 4 in their concession, but given the Opponent was not pursuing claim 4 for novelty I assume this was a typo. The Applicant noted at the hearing that some portions of their submissions had been rushed, see also discussion of page 59a and costs.
[214] AS at 163.
Given the above general lack of dispute, I will only address the dependent claims very briefly.
Claims 2-3
These claims are almost redundant to claim 1. They define that the scraper removes material from the flange or roller during operation of the mill, and that the scraper is spaced apart from the peripheral element and the roller, and where there are two scraper elements. These are plainly disclosed by D1 and D2.
Claim 5
Claim 5 has been discussed above, where I have found it unclear as the proper scope of the claim is ambiguous. While I have provided a tentative interpretation above, it will suffice here to note that the claim would include in scope at least where one roller is provided with a flange at each end (as per D2) and an associated scraper at each end.
D2 does not explicitly state either way if there is a second scraper. I note that D2 discusses a “material segregation issue” which meant that wear was greater at one end of the roller than the other (essentially the material being fed into the device was non-homogenous, with wetter/finer particulate at one end than the other). At the hearing there were brief comments that this may have meant that there was no, or limited, reason to place a scraper at each end.
My reading of D2 is that the segregation issue was an aberration, not an intentional feature, and that in normal operation the feed would have been homogenous. As such it seems clear that the excess pressure problems would be substantially symmetrical, and so it would have been obvious to place a scraper at each end.
Claims 7-9
Claims 7 and 8 define that the scraper element is a plate of wear resistant material, more particularly tungsten carbide. It seems accepted that tungsten carbide was a well-known material for wear elements in HPGRs[215]. Consequently, I consider this would have been an obvious selection of material for the scraper element. Claim 9 then further defines a mounting arm, which matches the steel beam disclosed by D1.
Claim 11
[215] Knecht#1 at 29, 32. Daniel#1 at 262.
This claim adds the feature that the scraper element extends “along the peripheral element.” The only comments I can see directed to this are those of Dr Daniel, who equated this as “along or parallel to” the peripheral element[216], which he considered disclosed by D1 and also by D3[217]. I agree this is disclosed by D1 and D3.
[216] Daniel#1 at 267-277.
[217] Daniel#1 at 379.
Inventive step in light of D3 and the CGK
Regarding claim 1, above I found the critical deficiencies of D3 in regard to novelty were that the scraper was not disposed “above, in a radial direction” (feature 1(viii)), and that the scraper is mounted to support 28, which does not seem to be part of the overall machine frame (feature 1(vii)).
Regarding feature 1(viii), the Opponent notes that D3 is a relatively older citation (1991), and that a reader at the time of the priority date (11 May 2017) would have been aware that in the intervening years the art had been substantially overtaken by the studded roller designs, and as such the person skilled in the art would understand there is a need to modify D3 to accommodate the autogenous protection layer.[218] The Applicant’s comments on D3 appear to only be directed to novelty[219], although, as discussed above, it was agreed that studded rollers were well known and preferable to non-studded rollers.
[218] OS at 133, quoting Daniel#2 at 214.
[219] AS at 167-170.
While I accept the Opponent’s contention that a skilled reader would have understood it was desirable to modify D3 to accommodate an autogenous layer, they have not made submissions on how D3 would be so modified.
D3 describes that the scraper is “mounted on fixed support 28 that its distance from cylinder 10 may be adjusted, as indicated by double-headed horizontal arrow, particularly to compensate for wear.”[220] While D3 had intended this adjustment be used to compensate for wear, at first instance, it appears that all that is necessary is to shift support 28 a short distance to the right of the position shown in Figure 1 of D3, to thereby produce a spacing between the roller and scraper. That is, no structural modification is needed, merely reconfiguring the available adjustments of D3. That supports the Opponent’s contention that it would have been an obvious and straightforward improvement to incorporate studded liners into the teaching of D3.
[220] D3 column 3 line 28-31.
Regarding feature 1(vi), I noted above that D3 does not disclose the scraper being attached to the machine frame, but displayed as a schematic drawing indicating attachment to some relatively immovable reference plane. However, the fact Dr Daniel presumed it was part of the overall machine frame[221] suggests that it would have been obvious to attach the scraper to the machine frame.
[221] Daniel#1 at 339. Note he reasons that if it is not, there would need to be some “other structure”, which he suggests is unlikely, but I note may well fall under the broad functional definition of machine frame anyway.
For completeness I note Mr Knecht also argues that D3 does not disclose the 1(vii) “stationary” feature, but this is because of his narrower construction of that feature.
Given the plausibility of the above, and the Applicant electing to not discuss inventive step for D3, on balance I consider claim 1 is not inventive over D3 in light of the CGK.
Regarding the dependent claims, the Opponent argues that D3 discloses and/or renders obvious the features of claims 2-3, 7-8, and 10[222]. While the Applicant has not directly answered this, I note Dr Knecht appears to accept claims 2-3, 7-8 and 10 will be disclosed other than his reservations against claim 1[223]. Absent other submission from the Applicant, I assume they adopt Mr Knecht’s position and do not contest these claims.
[222] OS at 134-138.
[223] Knecht#1 at 157-159.
Regarding claims 2-3 and 7-8, these claims do not contribute to an inventive step over D3 for essentially the same reasons as discussed above in the context of D1 and D2. Regarding claim 10, as noted under the novelty section above, D3 discloses the roller configuration with a peripheral element on each roller.
Regarding claims 12-13, it suffices to note that D3 places the scraper on the lower side of the roller, and as such claims 12-13 are inventive over D3 for essentially the same reasons discussed above.
Summary of inventive step
For the reasons discussed above, I consider claims 1-3, 5, and 7-11 do not involve an inventive step. I cannot find that claims 4, 6, and 12-13 lack an inventive step.
Utility - Principles
It is a requirement of paragraph 18(1)(c) of the Act that the invention, so far as claimed in any claim, must be useful:
“Subject to subsection (2), an invention is a patentable invention for the purposes of a standard patent if the invention, so far as claimed in any claim: …
(c) is useful.”
In Ranbaxy Australia Pty Ltd v Warner-Lambert Co LLC[224] the court stated at [141]:
“Under ss 138 and 18(1)(c) of the 1990 Act, it is a ground of invalidity if the claimed invention is not useful “so far as claimed in any claim”. If the claimed invention does what it is intended by the patentee to do and the end obtained is itself useful, the invention is useful within the meaning of s 18(1)(c) (see Rehm Pty Limited v Webster’s Security Systems (International) Pty Limited (1981) 81 ALR 79 at 96; Welcome Real-Time SA v Catuity Inc (2001) 113 FCR 110 at 144; and Fawcett v Homan (1896) 13 RPC 398 at 405). As to the first aspect, the invention as claimed must attain the result promised by the patentee (Advanced Building Systems Pty Limited v Ramset Fasteners (Aust) Pty Limited (1998) 194 CLR 171 at 187).” (emphasis added)
[224] [2008] FCAFC 82; 77 IPR 449 (Ranbaxy Australia)
The issue of utility was also considered in Lundbeck, where Emmett J stated at [81]:
“A claim is bad if it covers means that will not produce the desired result, even if a skilled person would know which means to avoid. That is to say, everything that is within the scope of a claim must be useful, otherwise the claim will fail for inutility.” (emphasis added)
In Apotex Pty Ltd v AstraZeneca AB (No 4)[225], Jagot J accepted that (at [352]):
“Ultimately, an asserted lack of utility must be established by appropriate evidence, not by mere speculation that the invention will not work or meet the promise set out in the specification” (emphasis added).
[225] [2013] FCA 162; (2013) 100 IPR 285 (Apotex)
However, the Opponent submits that there is no requirement to provide further evidence “over and above the patent specification itself”[226], referencing Uniline Australia v SBriggs[227] at [123]. I note that the relevant passage of Uniline is:
“Uniline also says that if claim 13 of the patent is construed in the manner contended for by SBriggs, claim 13 is invalid on the ground of inutility. Uniline says the invention claimed by the patent is not useful and thus not a patentable invention (s 18(1)(c) of the Patents Act) because the invention as claimed, adopting the hypothesis that the proper construction of the claims includes a plurality of springs engaging a non‑complex slot and key device, does not achieve the object of the invention. That follows for all the reasons earlier mentioned derived from the construction of the object clause, namely, the object of the invention is to confer, in a bi‑directional spring clutch, the advantages of a single spring reverse wound engaging a non‑complex engagement mechanism and once the claims comprehend the engagement of a plurality of springs, an essential element of the object of the invention is unsatisfied. Thus, the invention is not useful in terms of its overt object. Lack of utility rises or falls on the construction of the object of the invention recited in the specification. Since the object clause has the construction I have attributed to it, it follows that claims defining the monopoly, upon the hypothesis that the monopoly includes a plurality of springs of alternate winding, do not express the object and thus the invention as claimed is not useful.” (italics in original, bold emphasis added).
[226] OS at 184.
[227] [2009] FCA 222 (Uniline)
The Opponent intends Uniline to be understood as saying there may be a lack of utility where, on the face of the specification itself, the claimed invention will not deliver the promised benefit. While this is correct, it should be noted that in Uniline the object of the invention was determined to be specifically avoiding the need for a plurality of springs[228], so a claim encompassing a plurality of springs by definition does not deliver the benefit.
[228] Ibid. at [78], noting the object of the invention was to deliver two advantages: “That object statement suggests that both advantages of the invention need to be present to achieve the object of the invention which suggests that the object statement contemplates a monopoly to be defined by the claims in terms of a bi‑directional clutch that has the advantage of simply a single spring (rather than many) and a second advantage that complex openings and barriers in the configuration of the second shaft (…) engaging that single spring, are avoided” (emphasis in original).
The Applicant submits that a useful way to approach the question would be the following approach:
i.Construe the claims to determine the scope of the invention as claimed,
ii.Construe the description to determine what it discloses to the PSA in so far as any aim to be achieved by the invention, and
iii.Decide whether the claims contain features that achieve the desired outcome.
While I do appreciate the symmetry with the section 40 considerations, I’m not sure the Applicant’s considerations quite align to the established principles. The first proposed point is obviously essential, and the second point may be more simply expressed as construing the specification to determine the promised result (Ranbaxy Australia), which also will be essential. But the third proposed point should be replaced with: Does anything falling within the scope of the claims not achieve the promised result (Lundbeck)? In many instances this will be in the negative so long as the claim is limited to include those features the specification teaches will deliver the benefit, but as demonstrated by Uniline there may be circumstances where there may need to be consideration not just of what is included, but also of what is excluded.
Utility - Application
As a starting point, the Opponent submits that the promise of the Application is:
“to provide a roller mill having peripheral elements (plural) which prevent material from escaping axially from between the rollers (or from the milling gap) at the ends (plural - i.e. at both ends) of the mill and wherein the peripheral elements (plural) are subjected to less stress and wear.”[229]
[229] OS at 185-187.
The Applicant disputes this in a few ways. Firstly, they argue the Application does not promise “preventing” axial flow of material, rather simply “control” of axial flow[230].
[230] AS at 263a-b.
Regarding “prevent” vs “control”, I think this point is overstated by both parties. The specification is to be read by skilled experts, who would understand that nothing can ever completely guarantee no material will escape the crushing zone and would understand the term as meaning “minimising to the extent practical”. Similarly, a PSA would understand that since axial outflow represents wasted effort, any “control” will also be understood to be aimed at minimising the axial outflow. If there is any difference between “preventing axial outflow” and “controlling axial outflow”, it is at most a matter of degree which is not material for present purposes.
As a second point, the Applicant again references D10 to expand the concept of “peripheral elements”[231], which I have addressed above.
[231] AS at 263c-e.
The Applicant submits that the aim of the invention is:
“to prevent excessive build-up of ground material at the peripheral elements that could lead to excessive stresses and damage of the peripheral elements.”[232]
[232] AS at 265.
I do not accept the Opponent’s contention that the promised benefit of the application is associated with the problem of axial outflow of material. For similar reasons as discussed under the ground of support, it appears to me that the promised benefit is more narrowly focused on the “insight” that the autogenous layer is thicker in the end regions[233], leading to increased stress, and as such the promised benefit may reasonably be phrased as reducing or ameliorating the build-up of material on the end regions.
[233] Specification page 3 line 11-20.
To clarify, I understand and accept the Opponent’s argument that the roller mill as a whole will not function properly if there is only a flange at one end. However, I consider that to be a distraction from the real purpose of the invention. As noted above, the objective is to remove excess build-up of material in the end regions which is associated with the use of an end flange, and this is addressed by the addition of scrapers. Whether or not the comminution roller works as a whole, the claimed invention will reduce the build-up of material in these end regions. The Applicant provided a good analogy at the hearing; where an invention is a new improved car suspension, it is irrelevant that the car does not have a motor. The fact that the overall car does not work does not mean the invention does not deliver its promised benefit, because the promise was not the car, only the suspension. In the same way, in the present case the promise is not the flanged roller per se, which the specification acknowledges as prior art, the promise is the scraper component. There has been no evidence submitted that the scraper would not deliver its benefit if the other end of the roller is absent a flange.
As a second, closely related argument, the Opponent also submits that there must be two scrapers, one for each peripheral element[234]. This fails for the same reasons.
[234] OS at 189.
As a third point, the Opponent submits that where the peripheral elements only overlap the opposite roller by a tiny or minimal extent, they will not work[235]. This fails for similar reasoning to the above, and also because of how I construed “overlap”.
[235] OS at 190.
In summary, the Opponent’s main arguments for utility are not persuasive for the reasons above. However, I note there was an additional argument, discussed below.
Moving roller scraper
As a final, point, the Opponent has pursued an argument related to issues with placing a scraper adjacent to the moving roller. It was presented in their submissions under utility, and largely relates to comments made by Dr Daniel in EIR.
This argument was not particularised in the SGP, and since it is based on comments from the EIR the Applicant has not had opportunity to provide answering evidence. I also observe the argument presented appears more suited to a question of enablement than to utility. Generally, it is not appropriate to bring such matter into the decision in such a way, but the Applicant did provide some brief comments at the hearing that will be sufficient to dispense with the point.
To briefly summarise, this point relates to the Figure 2 embodiment, where each roller has one flange. In such a case, or at least some such cases, there will be provided a scraper associated with each roller. One of the rollers will of necessity be a stationary roller, and the other a moving or floating roller. For the floating roller, it follows that the scraper cannot be fixed relative to any stationary reference frame, rather it must move together with the floating roller. Dr Daniel outlines this reasoning, and further indicates that there is nothing within the specification which would teach how to make a scraper which can “chase” the floating roller[236].
[236] Daniel#2 at 194.

The Applicant’s answer was fairly simple: the floating roller by necessity is supported by some part of the machine frame, and since the person skilled in the art would have recognised that the scraper must move with its associated roller the claim will be understood to define a scraper attached to the respective machine frame. The Applicant submits that this is disclosed by the specification at page 10, which describes the arrangement of Figure 3 with reference to “respective support 40”, which the Applicant suggests anticipates that the other roller is provided with its own, associated support.
While I do have some concerns that the disclosure of such a “chasing” scraper is quite minimal, I consider it is sufficient to note the same general principles apply as I have done for the other utility arguments. The promised benefit is related to the removal of material from the end region of the roller in proximity to the peripheral element, which is achieved by the use of a scraper. The overall operation of the roller mill is beyond the scope of the invention, and therefore it is sufficient that the interaction between the scraper and the overall mill be described in general terms.
The Opponent’s contention that it does not deliver the promised benefit appears premised on the construction that the promised benefit is the overall operation of the mill, which I do not accept for the reasons set out above. To the extent the Opponent was arguing a lack of sufficient disclosure to enable the “chasing” to work, the argument has not been well formulated, but it appears the Applicant’s answer of “respective” portions of the machine frame will suffice. Either way, the Opponent has not satisfied their onus.
SUMMARY
For the reasons set out above, the opposition has been successful. I consider that:
·Claims 5 and 12 are unclear and does not comply with subsection 40(3), and
·Claims 1-3, 5, and 7-11 do not involve an inventive step.
The Applicant has included a request that in the event one or more claims fail, that they be allowed the opportunity to amend any defective claims. I agree that is the appropriate course, and, given the time of year, I allow the Applicant three (3) months from the date of this decision to propose amendments to overcome the issues identified.
COSTS
It is the usual practice that costs follow the event, and I see no reason to depart from that practice here. I award costs according to Schedule 8 against the Applicant.
Andrew Burgess
Delegate of the Commissioner of Patents
Annex
Claims:
1.A roller mill for comminuting granular material, comprising
a first grinding roller and a second grinding roller which are disposed opposite each other and drivable in a counter-rotating manner,
wherein a milling gap is configured between the opposing grinding rollers,
wherein at least one of the grinding rollers comprises at an axial end region of said grinding roller a peripheral element configured to extend across the milling gap and at least partially cover an axial end side of the opposite other grinding roller, and wherein
a scraping element is present and configured for at least partially removing material from the grinding roller,
characterized in that
the scraping element is attached to a machine frame at which the grinding rollers are mounted, in that the scraping element is held stationary relative to the grinding rollers, and in that the scraping element is disposed at a location above, in a radial direction of the grinding roller, the axial end of the grinding roller at which the peripheral element is provided.
2.The roller mill as claimed in claim 1, wherein the scraping element is disposed to remove at least part of the material that has accumulated on one or both of the peripheral element and the axial end region of the grinding roller during operation of the roller mill.
3.The roller mill as claimed in any one of the preceding claims, wherein the scraping element is disposed spaced apart from the peripheral element and the axial end region of the grinding roller.
4.The roller mill as claimed in any one of the preceding claims, wherein the scraping element is arranged such that at least one of a spacing between the scraping element and the peripheral element and a spacing between the scraping element and the axial end region of the grinding roller can be selectively set.
5.The roller mill as claimed in any one of the preceding claims, wherein the roller mill comprises two of said scraping elements which are respectively disposed radially above opposite ones of the axial end regions of the grinding rollers.
6.[There is no claim 6]
7.The roller mill as claimed in any one of the preceding claims, wherein the scraping element comprises a scraping plate made from a wear-resistant material.
8.The roller mill as claimed in claim 7, wherein the scraping plate material is tungsten carbide.
9.The roller mill as claimed in claim 7 or 8, wherein the scraping element comprises an arm to which the scraping plate is releasably fastened.
10.The roller mill as claimed in any one of the preceding claims, wherein each of the grinding rollers comprises one said peripheral element at one of the axially opposite axial end regions, and wherein the peripheral elements are located at opposite axial ends of the facing grinding rollers across the milling gap.
11.The roller mill as claimed in any one of the preceding claims, wherein the scraping element extends along the peripheral element.
12.A method for operating a roller mill for comminuting granular material, the roller mill having a first grinding roller and a second grinding roller which are disposed opposite each other and drivable in a counter-rotating manner, wherein a milling gap is configured between the opposing grinding rollers, and wherein at least one of the grinding rollers comprises at an end region of opposite axial ends of the rollers a peripheral element which is configured to extend across the milling gap and at least partially cover an end side of the opposite grinding roller, the method comprising at least the step of:
removing at least partially material from that one of the axial end regions of the grinding rollers that comprises the peripheral element by means of a scraping element that is attached to a machine frame at which the grinding rollers are mounted and which scraping element is held stationary relative to the grinding rollers and is located over the relevant end region of the grinding roller.
13.The method as claimed in claim 12, wherein the material is removed from those axially opposite end regions of the two grinding rollers that have a said peripheral element.