Metso Sweden AB v Outotec Pty Ltd - [2019] APO 25

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Metso Sweden AB v Outotec Pty Ltd [2019] APO 25

Patent Application: 2014202392

Title:A System and Method for Orientating Scan Cloud Data Relative to Base Reference Data

Patent Applicant:                   Outotec Pty Ltd
Opponent:  Metso Sweden AB
Delegate:  Isaac Tan
Decision Date:  4 June 2019
Hearing Date:  13 March 2019 in Brisbane, QLD

Catchwords: PATENTS – section 59 – orientation of point cloud scan data – comminution of minerals – measurement of wear in a mill – regulation 5.23 considered and allowed – claim construction – essential and inessential integers – demonstration of software packages – novelty and inventive step under section 18 – impermissibly tainted with the benefit of hindsight – no evidence to suggest that the specification does not disclose the best method known to the applicant under section 40(2)(aa) – clarity under section 40(3) – claims are clear – manner of manufacture under section 18(1)(a) – mere collocation – working interrelationship exists – none of the grounds have been made out – opposition unsuccessful – no award of costs – application to proceed to grant

Representation: Applicant
§Scott Vilè, Patent Attorney of Wrays
§Phillip Burns, Patent Attorney of Wrays
Opponent

§Ben Fitzpatrick, Counsel for the Opponent
§Wayne Slater, Patent Attorney of IP Gateway Patent & Trade Mark Attorneys
§Daniel Rosenthal, Patent Attorney of IP Gateway Patent & Trade Mark Attorneys.
§Andreas Hoffmann, IPR Director of Metso Sweden AB
§Lars Furtenbach, Global Manager, RTD & Engineering, Mill Lining Solutions of Metso Sweden AB
§Sandra Lindvall, Patent Engineer of Metso Sweden AB

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2014202392

Title:A System and Method for Orientating Scan Cloud Data Relative to Base Reference Data

Patent Applicant: Outotec Pty Ltd
Date of Decision: 4 June 2019
DECISION
The opposition is unsuccessful. None of the grounds have been made out.
Subject to appeal, I direct that the Application proceeds to grant.
I make no award of costs.
REASONS FOR DECISION
Background

Australian patent application 2014202392 (Application) was filed on 1 May 2014 in the name of Scanalyse Pty Ltd as a divisional of AU 2007335263 and derives a priority date of 20 December 2006. The application is one of a series of divisional applications AU2013251255, AU 2015210442 and AU 2017232061, and lists Michael Paul Stewart, Derek Lichti and Jochen Franke as inventors.
On 3 September 2015, a Notice of Acceptance was issued indicating that the Application had been accepted on 28 August 2015 and is to be advertised in the Australian Official Journal of Patents (Journal) on 17 September 2015. On 17 December 2015, a Notice of Opposition was filed by IP Gateway Patent & Trade Mark Attorneys Pty Ltd on behalf of Metso Sweden AB (Opponent). The Statement of Grounds and Particulars was filed on 17 March 2016 and was amended on 24 December 2018. On 1 June 2016, a request was filed to assign the Application to Outotec Pty Ltd (Applicant). The assignment request was allowed on 15 June 2016.
Throughout the opposition proceedings, the Applicant proposed several sets of amendments to the specification. These amendments were ultimately allowed. The latest amendment request, which was received on 25 September 2017, was advertised in the journal on 10 May 2018.
On 2 October 2018, the Applicant indicated that they will be relying on written submissions only for the Hearing. A hearing was conducted on 13 March 2019 in Brisbane, Qld, at the offices of IP Gateway Patent & Trade Mark Attorneys. The Applicant did not attend the hearing or file written submissions.
Applicable Law
Examination of the application was requested after 15 April 2013. Consequently, the present opposition is governed by the Patents Act 1990 (the Act) and Patents Regulations 1991 (the Regulations) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Raising the Bar). Amendments to sections 7, 40 and 49 of the Act apply to the present case as a consequence of Schedule 1, items 55(1)(d) and 55(4)(a), and Schedule 6, item 133(7)(d) of the Raising the Bar Act.
Thus the standard of proof that applies in the present case is the balance of probabilities. Under subsection 60(3A) of the Act, if I am satisfied, on the balance of probabilities, that a ground of opposition to the grant of a patent exists, I may refuse the application.
The Grounds of the Opposition
The Statement of Grounds and Particulars as amended on 24 December 2018, identifies grounds under Section 18(1)(a), Section 18(1)(b)(i), Section 18(1)(b)(ii), Section 18(1)(c), Section 40(2), Section 40(2)(aa) and Section 40(3).
At the hearing, the Opponent did not press the ground under Section 40(2).
Evidence and Submissions
The only set of evidence filed in respect of the present matter, is evidence filed as Evidence in Support. It consists of the following declarations:
·Christopher Thewalt (Thewalt#1), dated 15 June 2016 with Exhibits CT-01 to CT-16.
·Gerd Schwaderer (Schwaderer#1), dated 16 June 2016 with Exhibits GS-01 to GS-05.
·Tage Moller (Moller), dated 16 June 2016 with Exhibits TM-01 to TM-03.
·Brian Flintoff (Flintoff), dated 15 June 2016 with Exhibits BF-01 to BF-04.
·Martin Prestage (Prestage), dated 16 June 2016. There are no Exhibits accompanying this declaration.
·Mikko Malkamäki (Malkamäki), dated 16 June 2016 with Exhibits MM-02 to MM-03.
·Tony Jennings (Jennings), dated 15 June 2016 with Exhibits TJ-01 to TJ-87.
·Daniel Rosenthal (Rosenthal), dated 17 June 2016 with Exhibits DR-01 to DR-18.
On 24 December 2018 and 23 January 2019, the Opponent submitted a request for the following material to be considered under Regulation 5.23.
·A second declaration by Gerd Schwaderer (Schwaderer#2), dated 18 December 2018 with Exhibits GS2-01 to GS2-03.
·A second declaration by Christopher Thewalt (Thewalt#2), dated 22 January 2019 with Exhibits CT2-01 to CT2-07.
·Lars Furtenbach (Furtenbach), dated 21 December 2018 with Exhibits LF-01 to LF-04.
·Documents filed in respect of the European opposition for EP 1899687.
Regulation 5.23 Request
On 24 December 2018, the Opponent submitted a request for material to be considered under Regulation 5.23.
Regulation 5.23 sets out that the Commissioner may consult documents:
(1) For the purposes of deciding an opposition, the Commissioner may consult a document that:
(a) is relevant to the opposition; and
(b) has not been filed under this Chapter; and
(c) is available in the Patent Office.
(2) If the Commissioner proposes to rely on the document, the Commissioner must give the parties:
(a) notice of the Commissioner's intention to do so; and
(b) a copy of, or access to, the document; and
(c) an opportunity to give evidence or make representations about the document.
In Reflex Instruments Asia Pacific Ltd v Minnovare Limited, I set out the following factors which could be considered when determining whether material should be relied upon pursuant to Regulation 5.23:[1]
1.          The circumstances leading up to the evidence not being filed earlier;
2.          What the evidence shows;
3.          Whether the information is likely to be crucial to the Delegate’s decision;
4.          The public interest in having the information considered;
5.          The balance of convenience of the parties if the information is considered.
[1] Reflex Instruments Asia Pacific Pty Ltd v Minnovare Limited [2017] APO 8 at [53]–[68]. See also H Lundbeck A/S v Sandoz Pty Ltd [2019] APO 18 at [28]. Arrow Pharmaceuticals Pty Ltd v Novartis AG [2019] APO 22 at [13]-[30].
However, as noted by the Delegate in Merial Limited v Bayer Intellectual Property GmbH:[2]
If the new information is not likely to change the outcome of the opposition in a significant way, there is little advantage gained by bringing it into the opposition.
[2] Merial Limited v Bayer Intellectual Property GmbH [2015] APO 16 at [25]. See also Gary B Cox v MacroGenics, Inc. [2019] APO 13 at [6]-[9]. Norbrook Laboratories Limited v Bayer New Zealand Limited [2019] APO 20 at [8]-[9].
On 4 February 2019, a Delegate of the Commissioner wrote to the parties indicating that subject to comments from the parties in accordance with Regulation 5.32(2), she intended to invoke regulation 5.23 ‘in relation to the Furtenbach, Schwaderer and Thewalt declarations, but not in relation to the remainder of the material.’[3] Neither party made any comments and consequently, the direction was made on 13 February 2019.
[3] See correspondence issued 4 February 2019, referring to Furtenbach, Schwaderer#2 and Thewalt#2.
The law
Section 18 of the Act provides as follow:
Patentable inventions for the purposes of a standard patent
(1) 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:
(a) is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies; and
(b) when compared with the prior art base as it existed before the priority date of that claim:
(i) is novel; and
(ii) involves an inventive step
(c) is useful;
At the relevant time, the ‘prior art base’ is provided by section 7(1):
(1) For the purposes of this Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any one of the following kinds of information, each of which must be considered separately:
(a) prior art information (other than that mentioned in paragraph (c)) made publicly available in a single document or through doing a single act;
(b) prior art information (other than that mentioned in paragraph (c)) made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art would treat them as a single source of that information;
(c) prior art information contained in a single specification of the kind mentioned in subparagraph (b)(ii) of the definition of prior art base in Schedule 1.
Schedule 1 provides a dictionary of expressions and relevantly, ‘prior art information’ is defined as information that is part of the prior art base at the relevant time as:
“prior art base" means:
(a) in relation to deciding whether an invention does or does not involve an inventive step or an innovative step:
(i) information in a document that is publicly available, whether in or out of the patent area; and
(ii) information made publicly available through doing an act, whether in or out of the patent area.
(b) in relation to deciding whether an invention is or is not novel:
(i) information of a kind mentioned in paragraph (a); and
(ii) information contained in a published specification filed in respect of a complete application where:
(A) if the information is, or were to be, the subject of a claim of the specification, the claim has, or would have, a priority date earlier than that of the claim under consideration; and
(B) the specification was published on or after the priority date of the claim under consideration; and
(C) the information was contained in the specification on its filing date.
The relevant parts of Section 40 provides that:
(2) A complete specification must:
(a) disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art; and
(aa) disclose the best method known to the applicant of performing the invention
(3) The claim or claims must be clear and succinct and supported by matter disclosed in the specification.
The Specification
According to the specification, the invention resides, generally, in the comminution of mineral ore in large rotating cylindrical mills. The specification explains that:[4]
In the comminution of minerals within the mining industry, the crushed ore is separated into pieces and may then be fed into rotating cylindrical mills. The rotation of a mill about its axis causes the ore pieces to tumble under gravity, thus grinding the ore into decreasingly smaller fractions. Some types of grinding mills are fitted with secondary grinding systems such as iron or steel balls (ball mills), steel rods (rod mills) or flint pebbles (pebble mills) which assist the grinding process.
The accurate measurement of wear in a mill is particularly important, as the cost of incorrectly predicting which liners to replace is great. If the nature of the wear can be identified accurately, wear patterns may also be identified to optimise the operation of the mill.
[4] Specification, Page 1 Lines 26-Page 2 Line 4.
Aside from the liner, it is also important to measure the volume of the secondary grinding system, the size of the components thereof, and the size of screen systems within a discharge arrangement. While there are several methods upon which these variables can be manually measured, these methods may be inaccurate, susceptible to human error, or may require significant downtime which is impractical in an operational mill.[5] The specification goes on to state, under the section ‘Disclosure of the Invention’, that:[6]
It is an object of the present invention to ameliorate, mitigate or overcome, at least one of the aforementioned problems associated with prior art mill measurement, or to at least provide the public with a useful choice in an alternative system for mill measurement.
It should be appreciated with the above object said, however, the present invention is in no way limited solely to application with mill liner measurement and may have other applications as discussed elsewhere in the specification.
[5] Ibid Page 2 Line 5–Page 3 Line 22.
[6] Ibid Page 3 Lines 24-29.
By way of example, one embodiment of the system used to perform mill measurements is disclosed in Figure 1. Notably, Figure 1 is also disclosed in international publication WO 2007/000010, a prior publication of the Applicant. This publication discloses a system for measuring and mapping a surface relative to a reference surface. Specifically, the system provides the use of a scanner to gather point cloud data, and then measure and map that point cloud data relative to a reference surface. Figure 1 is reproduced below:[7]
As disclosed in WO 2007/000010 and included herein with reference to Figure 1, an input source generator can be adopted in the form of first gathering point data using a laser scanner 11 from a mill having a cylindrical shell 25, the shell having a feed end 31 and a discharge end 33. The point cloud data may then be secondly stored in a database or other suitable digital storage medium. A transformation processor, forming part of a data processing system, then assesses the point cloud data generated by the input source generator, as would be appreciated by a person skilled in the art.
(emphasis in specification)
[7] Ibid Page 16 Lines 8-16.
Although the specification is brief in respect of the laser scanner, an overview of a suitable laser scanner is provided in WO 2007/000010:[8]
[8] WO 2007/000010 A1, Pages 12–14.
The laser scanner 11 is a scientific instrument of known design comprising a housing within which is disposed a distance measuring unit (DMU), a mechanism for rotating the distance measuring unit, and scanner electronics interfaced with the DMU and the rotating mechanism for operating the same.
The DMU (not shown) generally comprises:
(i) a transmitter for transmitting laser radiation through a lens and mirror system from a reference point towards a surface;
(ii) a detector disposed proximate to the reference point for detecting reflected laser radiation from the surface through the lens and mirror system; and
(iii) distance processing means to measure the distance between the laser scanner and the surface, and generate point cloud data in respect thereof.
The distance processing means is embodied in appropriate microprocessor circuitry interfaced with the transmitter and detector and the scanner electronics to operate under software control for providing particular functionality for capturing data and outputting same to the data acquisition means 15 by means of the interface 21. This interface 21, can be any type of landline or wireless network connection accepting data output from the laser scanner 11 and inputting it to the computer 13 for software controlled acquisition and accumulation by the data acquisition means 15.
The terrestrial laser scanner 11 used in the preferred embodiment is a high precision three-dimensional (3D) laser scanner that collects a large amount of precise 3D point measurements to generate point cloud data by directly measuring distance to a remote surface by time of flight laser range-finding. The laser scanner 11 is particularly characterised by the following technical characteristics/specifications:
·Able to capture data in a near-spherical field of view (FOV) (i.e., 360° horizontal FOV, 320° vertical FOV)
·Able to capture a dense dataset in the order of several millions of points throughout the full field of view within a few minutes
·Small enough to be fit through the access hole into the mill
·Able to function normally when oriented upside down or its vertical rotation axis is not vertical
·Measurement accuracy of ±3 mm or better
·The distance measurement unit performance is such that the data are not biased by the reflectance properties of the liner surface
·Able to be operated remotely by cable or other means from a distance of several metres
·Able to be pre-calibrated for systematic errors.
To collect point cloud data, the laser scanner having an internal co-ordinate system, is placed approximately in the middle of a mill. Once collected, the point cloud data needs to be aligned with the co-ordinate system of the mill. This is performed by arbitrarily positioning and orientating the point cloud data, relative to the mill coordinate system, until the co-ordinate system of the mill and point cloud data are aligned.[9] This is exemplified below with reference to Figure 11:[10]
With reference to Figure 11, the initial scan cloud data 256 is referenced to the laser scanner's co-ordinate system 258, which is arbitrarily positioned and orientated relative to the mill co-ordinate system 260. A scan cloud rotation process at 263 is utilised to align the mill and scanner co-ordinate systems. After the scan cloud rotation process at 263 has completed, the scan cloud data is substantially aligned with the mill co-ordinate system 262.
(emphasis in specification)
[9] Specification, Page 16 Lines 12-22.
[10] Ibid Page 16 Lines 15-22; Figure 11.
In some instances, the mill may consist of data corresponding to a computer-aided design (CAD) model of the mill, or from a scan of the internal shell without the liners in place.[11] Once the point cloud data is orientated to the base reference data, it is then possible to calculate the mill liner thickness,[12] and the volume of objects that are not fixed to the shell.[13]
[11] Ibid Page 16 Lines 17-22.
[12] Ibid Page 5 Line 29-Page 6 Line 2.
[13] Ibid Page 6 Lines 12-21.
The claims
The specification, as amended, contains 1 independent claim and 6 dependent claims. A copy of the claims is included as annex. Independent claim 1 is provided below:
Claim 1
A system for orientating point cloud data of a first surface relative to base reference data of a mill, the first surface being the surface of a wear liner(s) having a thickness, and the base reference data comprising a representation of a second surface, said second surface being an inner surface of said mill substantially distinct from said first surface;
            wherein said base reference data and point cloud data are each referenced to their own respective co-ordinate systems, wherein said base reference data is referenced to a co-ordinate system related to the geometry of said mill;
            wherein said second surface comprises a substantially cylindrical shell with opposing ends, said base reference data comprising critical geometrical parameters defining the location of the central longitudinal axis of the shell, said critical geometrical parameters further comprising radius and length variables defining:
            the radius of the shell; and
            the length of the cylindrical portion of the shell, such that said critical geometrical
parameters describe the geometry of the second surface of the mill;
            the system comprising:
            an input source generator in the form of a scanner adapted to provide said point cloud data of the first surface, a co-ordinate system of the point cloud of the first surface being referenced to a reference point of the scanner;
            a data editing means to filter and remove spurious point data from the point cloud data of the first surface, the data editing means including segmenting means for segmenting points in the accumulated point cloud data attributable to objects that are non-fixably connected to the mill; wherein said data editing means further includes partitioning means to partition said point cloud data into discrete segments corresponding to different geometrically described sections of
said first surface;
            a tilt-correction means for orientating said point cloud data of the first surface relative to the base reference data of the second surface of the mill, wherein the tilt-correction means includes a point cloud data orientation means, such that the co-ordinate system of the point cloud data aligns with the co-ordinate system of the base reference data; wherein the point cloud data
orientation means comprises:
            a temporary point removal means for temporarily removing points that are substantially longitudinally parallel with points removed by a scanner structure filter adapted to remove points in the point cloud data attributable to any supporting means used to situate, stabilise or protect the scanner;
a rotation values means to calculate rotation values to be applied to the point cloud data;
a point cloud data rotation process; and
a point restoration means whereby points removed by the temporary point removal means are restored to the point cloud data;
a non-fixably connected volume measurement means, to measure the volume of objects that are non-fixably connected to said first surface based on segmentation by the data editing means of points attributable to the non-fixably connected objects from the point cloud data; and calculation means for, after orientation of the point cloud data with the
base reference data, calculating the displacement of the first surface to the second surface defined by the base reference data of the mill to determine the thickness of the wear liner(s).

The rest of the claims are provided, as annex to this decision.
Person skilled in the art
In KD Kanopy Australasia Pty Ltd v Insta Image Pty Ltd, Kiefel J identified the skilled addressee as:[14]
...a person acquainted with the surrounding circumstances of the state of the art and manufacture at the relevant time ... They are likely to have a practical interest in the subject matter of the invention ... and may often work in the art with which the invention is connected.
[14] KD Kanopy Australasia Pty Ltd v Insta Image Pty Ltd (2007) FCA 481;71 IPR 615 at [16].
In Root Quality Pty Ltd v Root Control Technologies Pty Ltd, Finkelstein J stated:[15]
He is the person to whom the patent is addressed and who must construe it. He is the person whose knowledge will determine whether a patent is novel. He is the person who will judge whether a patent is obvious.
[15] Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980; 49 IPR 225 at [70].
However, in AstraZeneca AB v Apotex Pty Ltd, the High Court noted that:[16]
The notional person is not an avatar for expert witnesses whose testimony is accepted by the court. It is a pale shadow of a real person – a tool of analysis which guides the court in determining, by reference to expert and other evidence, whether an invention as claimed does not involve an inventive step.
[16] AstraZeneca AB v Apotex Pty Ltd [2015] HCA 30 at [23].
Mr Jennings is the owner of Intellectual Technology Services, an independent research firm, which provides independent professional searching services covering all facets of the intellectual property landscape.[17] Mr Rosenthal is a Patent Attorney representing the Opponent.[18] Both declarations were filed for the purpose of admitting certain exhibits into evidence.
[17] Jennings, [1]-[2].
[18] Rosenthal, [1].
Dr Thewalt was Vice President, Scanning Software Business, of Leica Geosystems Inc. (formally Cyra Technologies) from 2011 until his retirement on 2 May 2016. Previously, he held the position of Vice Present, Software Engineering, from 1996 to 2001, and Director Software Engineering, from 1996 to 2001. Dr Thewalt explains that Cyra was a start-up, which was founded to develop 3D laser scanning. Cyra was acquired by Leica in 2001.[19] Notably, Dr Thewalt is named inventor on a number of patent applications,[20] and in his time built the first and subsequent versions of the Cyclone software package, and the CloudWorx software package for Leica Geosystems well before 2006.[21] Dr Thewalt’s academic qualifications are as follows:[22]
[19] Thewalt#1, [1].
[20] Ibid [5] including WO97/40342, WO0188566, US2004252288, US6804380, and others.
[21] Ibid [5].
[22] Ibid [4].
a.1977-1981         McMaster University, Hamilton, Canada
B.Eng., Civil Engineering,
b.1981-1987         University of California at Berkeley, Berkeley, CA
M.S., Civil Engineering (Structural), 1982
Ph.D., Civil Engineering (Structural), 1987
M.S., Computer Science, 1987
c.2003-2004         St. Mary’s College of California, Moraga, CA
MBA, with Honors
Mr Schwaderer currently holds the position of Business Development Metrology for Volume Graphics GmbH, and has worked in the field of point clouds acquired from 3D laser scanners since 1998.[23] Previously, Mr Schwaderer held positions with 3D Systems, Geomagic GmbH, EDS / Unigraphics Solutions (Part of Siemens since 2007), Imageware (acquired by SDRC in 2000) and Hosaca (later TISEAK GmbH).[24] Mr Schwaderer explains that in his current role, he informs and educates customers on the capabilities of Volume Graphic’s software in handling point clouds. Notably, Mr Schwaderer states that since 1998, his roles have involved similar responsibilities, ‘requiring a high level of knowledge about customer and partner requirements in relation to 3D scanning and point clouds, and about the capabilities and operations of Volume Graphic’ products and the products of our competitors.’[25] Mr Schwaderer’s academic qualifications are as follows:[26]
a.1979-1987 Friedrich-List Gymnasium Reutlingen Seite 3 von 3.
b.1989-1992 Aviation and Space Technologies at the University of Stuttgart.
c.1992-1996 Mechanical Engineering University of Reutlingen (FH). Diploma of Mechanical Engineering. Diploma thesis related to an injection mold.
[23] Schwaderer#1, [1].
[24] Ibid [3].
[25] Ibid [2].
[26] Ibid [4].
Mr Moller presently holds the position of Mill Lining Solution for Metso Sweden AB, and has held a number of positions within the field of mill lining solutions since 1973. For example, between 1973 to 1998, Mr Moller worked for Skega AB Sweden and Skega Canada LTD before commencing with Metso in 1998 as RTD Manager.[27] Mr Moller’s academic qualification is as follows:[28]
1972 Mechanical Engineering Technician, (Fackskoleingenjor), Balderskolan Skelleftea, SWEDEN
[27] Moller, [1]-[4].
[28] Ibid [3].
Dr Flintoff is a retired consultant who advises in the mineral processing area. Prior to his retirement, Dr Flintoff was Senior Vice President of Technology Development at Metso Mining and Construction Technology. Dr Flintoff held this position for five years from about July 2009 to October 2014.[29] Dr Flintoff’s extensive curriculum vitae sets out an impressive career spanning the mineral processing industry and academia, dating back to 1973.[30] One of Dr Flintoff’s noted achievements in the field of comminution includes a book, entitled ‘A Practical Guide to Process Controls in the Minerals Industry’, Flintoff BC and Mular AL, published in 1992, 311 pages.[31] Dr Flintoff’s academic qualifications are as follows:[32]
a.Ph.D Mineral Engineering, University of Alberta, Edmonton, Canada (1983)
b.M.Sc. Metallurgical Engineering, University of Alberta, Edmonton, Canada (1975)
c.B.Sc. Chemistry, Simon Fraser University, Vancouver, Canada (1971).
[29] Flintoff, [1].
[30] Exhibit BF-01
[31] Flintoff, [7].
[32] Ibid [5].
Mr Prestage holds the position of Vice President, Sales, for Metso Australia Limited, and has worked in the mill lining industry for Metso Australia Limited for over 20 years since 1995.[33] In previous positions, Mr Prestage has managed the division responsible for the sale and maintenance of mill liners in Australia, Papua New Guinea, Malaysia, Philippines, Thailand and Indonesia.[34] Mr Prestage holds a Bachelor of Business degree from Edith Cowan University.[35]
[33] Prestage, [1]-[2].
[34] Ibid [3].
[35] Ibid [4].
Mr Malkamäki is a Product Specialist in crusher wear solutions for Metso Minerals Oy and has held this position since 1 April 2009. Prior to this, he held positions with Metso Minerals Oy or its predecessor companies as a product support manager in compressive crusher wears, a development engineer, and as a product support engineer.[36] Mr Malkamäki graduated in 2002 from Tampere Polytechnic with a B.Sc. in Mechanical Engineering.[37] Relevantly, Mr Malkamäki has worked on wear parts since about 2000, and has more than 10 years’ experience working on wear surfaces of crushers.[38]
[36] Malkamäki, [1]-[2].
[37] Ibid [7].
[38] Ibid [6].
Mr Furtenbach presently holds the position of Global Manager, Research and Technical Development (RTD) & Engineering in the area of mill lining solutions for Metso (Sweden) AB.[39] In the role of Global Manager, Mr Furtenbach explains that he has responsibility of development of technological and engineering solutions and product specifications in the field of mill lining solutions, which includes assessment of wear in mill liners.[40] Since 1998, Mr Furtenbach has held numerous positions in the field of mill lining with Metso, and Svedala Skega AG.[41] Mr Furtenbach graduated in 1997 from Luleå University of Technology in Sweden, with a Masters degree in mechanical engineering, computer aided design.[42]
[39] Furtenbach, [1].
[40] Ibid [2].
[41] Ibid [4].
[42] Ibid [3]
Noting that the Applicant did not file any evidence or submissions, there is no dispute as to the suitability of any of the declarants, or what weight the evidence should be given. In my view, all the declarants, in their respective profession and specialisation, possess appropriate expertise covering various facets of the claimed invention. Consequently, they are suitable to provide evidence as the hypothetical person skilled in the art.
Claim Construction
The rules of construction are well established. In Clorox Australia Pty Ltd v International Consolidated Business Pty Ltd, Stone J set out that:[43]
[i]t is well established that the claims contained in the specification set out the legal limits of the monopoly. Yet, when construing the claims and determining the nature and extent of this monopoly it is necessary to consider the context in which the claims are made. This requires a consideration of the specification as a whole even if there is no apparent ambiguity in the claim.
[43]Clorox Australia Pty Ltd v International Consolidated Business Pty Ltd [2006] FCA 261 at [16] citing Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9; Decor Corporation Pty Ltd (formerly Brian Davis & Company Pty Ltd) & Anor v Dart Industries Inc. [1988] FCA 682; Flexible Steel Lacing Company v Beltreco Ltd [2000] FCA 890.
If the claims are clear and unambiguous, ‘[i]t is not legitimate to narrow or expand the boundaries of the monopoly as fixed by the words of the claims by adding to those words a gloss drawn from other parts of the specification’.[44] ‘It is to be read secundum subjectam materiam…[t]he claim and the specification should be construed as it would be ordinarily understood.’[45] As stated by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd:[46]
the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear. Words used in a specification are to be given the meaning which the 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.
[44] Ibid [17] citing Welch Perrin &Co. Pty. Ltd. v. Worrel [1961] HCA 91. See also Kimberly-Clark Australia Pty Limited v Multigate Medical Products Pty Limited [2010] FCA 1318, [39]. Ranbaxy Australia Pty Ltd v Warner-Lambert Company LLC (No 2) [2006] FCA 1787; 71 IPR 46.
[45] Martin v Scribal Pty Ltd [1954] HCA 48; (1954) 92 CLR 17 at [14]. See also Product Management Group Pty Ltd v Blue Gentian LLC [2015] FCAFC 179; 240 FCR 85; 116 IPR 54.
[46] H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70 at [118] citing Jupiters Ltd v Neurizon Pty Ltd [2005] FCAFC 90; (2005) 222 ALR 155 at [67]. See also Dincel Constructions Systems Pty Ltd v AFS Systems Pty Ltd [2018] FCAFC 157; 360 ALR 261 at [53].
The Opponent submits that, ‘as a matter of construction, it is not clear whether claim 1 (and therefore all of the claims) is necessarily limited to use of the claimed system for orientating point cloud data for the measurement of mill liner thickness and ball charge volume.[47] To fully comprehend the Opponent’s concerns, it is useful to separate claim 1 into two elements. The first element begins with the preamble of claim 1, which states, ‘[a] system for orientating point cloud data of a first surface relative to base reference data of a mill’, followed by several parameters which sets out what the environment upon which the point cloud data and base reference data is collected. Specifically, the point cloud data corresponds to the surface of a wear liner, and the base reference data corresponds to the inner surface of a substantially mill comprising a substantially cylindrical shell. The point cloud data and the base reference data are each referenced to their own respective co-ordinate system.
[47] Opponent Submissions, [49].
The second element begins with the sentence ‘the system comprising’, and all the integers which follows. In this respect, the Opponent’s view is that the first element is not limiting, that the claims would be anticipated by a system comprising all the integers of the second element, and only needs to be capable of working with, and transforming data subjected to the parameters of the first element. The importance of this question will become more apparent, when considering the question of novelty and inventive step.
Where a claim is directed to a product or apparatus, the term ‘for’, ‘for use in’, ‘used to’, ‘used for’ and the like place a limitation on what is claimed only to the extent that it must be suitable for the specified purpose. In this respect, where the term is used in the form ‘Apparatus for…’, this is merely indicative of the environment in which it is intended to use the apparatus, and do not limit the apparatus to use solely in that environment.[48] As a consequence, a claim of this form is to be construed as a per se claim to the apparatus, albeit having a functional capability in the specified environment.[49]
[48] Thurston Catton's Application (1978) AOJP 3666. L'Aire Liquide Societe Anonyme pour L'Etude et L'Exploitation des Precedes George Claude, (1932) 49 RPC 428. See also Streetworx Pty Ltd v Artcraft Urban Group Pty Ltd [2014] FCA 1366; 110 IPR 82.
[49] Farbwerke Hoechst Aktiengesellschaft vormals Meister Lucius & Bruning’s Application (1964) AOJP 1483.
In Foxtel Management Pty Ltd v The Advanced Technology Group Pty Ltd (Foxtel), I was presented with a similar issue of construction. The invention in Foxtel relates to a computer system for facilitating a digital object download over a network.[50] Here, the question posed was whether the scope of the claim was sufficiently broad, such that it would be infringed by the individual components in an inactive state, available for sale in a store. I partially agreed with this broader interpretation, albeit one caveat:[51]
The amended claims define a computing system or method with steps to be performed by a number of components. I will need to construe the word ‘for’ in context of the claims and specification as a whole. From a reading of the specification I am satisfied that the computing system or method, as defined in the claims, is at least restricted to a specific environment. This is made clear throughout the specification, and the preamble of the amended claims, where the environment within which it operates is specified as to facilitate the downloading of a digital object over a network. However it does not follow that the operation of the claimed components, is limited such that the downloading of a digital object over a network must be facilitated. Rather, the components simply need to be intrinsically capable of doing so, albeit with one caveat. The amended claims refer to the software application as being ‘executable’ on a first electronic device and ‘arranged to send at least one digital object to the server via the network’. Therefore the software application must be able to perform this action, and not merely be capable of doing so. In a similar vein, it would appear that the digital object is an extension of the how the software application functions, and will therefore need to be able to encapsulate at least the integers specified in the amended claims.
[50] Foxtel Management Pty Ltd v The Advanced Technology Group Pty Ltd [2018] APO 83 at [47]–[54].
[51] Ibid [40] citing Melbourne Water Corporation v Green Edge (IPCO) Pty Ltd [2009] APO 26 at [28]. Machinery Developments Limited v Sealed Air Corporation [2003] APO 22 at [14]; Davies v Lazer Safe Pty Ltd [2018] FCA 702 at [224]-[239].
Turning my mind to claim 1 of the present matter, as outlined above, claim 1 is directed to a system ‘for’ originating point cloud data, as opposed to a system which is ‘arranged to’. If I proceed to apply the same rationale as set out in Foxtel, then it follows that the system claimed merely needs to be capable of working with, and transforming data subjected to the parameters defined by the first element. However, as noted in Martin v Scribal Pty Ltd, ‘it is right to construe a claim with an eye benevolent to the inventor and with a view to making the invention work - this is an application of the old doctrine ut res magis valeat quam pereat’.[52]
[52] Martin v Scribal Pty Ltd [1954] HCA 48; (1954) 92 CLR 17 at [7]. See also Leonardis, Nicola v Sartas No 1 Pty Ltd & Anor [1996] FCA 449 at [12].
In my opinion, such an interpretation where the first element, being a series of parameters, which should describe the environment upon which the point cloud data and base reference data, is merely optional, raises the question of whether this may render the invention inoperable. In Populin v HB Nominees Pty Ltd, the Full Court adopted the view that:[53]
The essential features of the product or process for which it claims a monopoly are to be determined not as a matter of abstract uninformed construction but by a common sense assessment of what the words used convey in the context of then-existing published knowledge.
[53] Populin v HB Nominees Pty Ltd [1982] FCA 37; (1981) 41 ALR 471 at 476.
Therefore, in my view, all features mentioned in a claim are essential to the invention unless said features have been clearly identified as being optional or inessential. This then brings me to the question of what the scope of the first element should be. Noting the use of the term ‘for’, it appears that the system is not designed or restricted in such a manner, that the system is only capable of operating within an environment defined by the parameters of the first element. Conversely, a system which comprises all the components of the second element but was not designed within the context of the first element in mind, or that its operation with the parameters defined is reduced from a probability to less than a mere possibility, would be too far removed. In this respect, I am of the view that claim 1 is directed towards a system comprising all the integers of the second element, but was designed in such a manner, that its normal and intended use must contemplate operating within the environment defined by the parameters of the first element.[54]
[54] See, eg, Davies v Lazer Safe Pty Ltd [2019] FCAFC 65 at [37]-[61].
Clarity
The principles relevant to whether claims are clear, is as articulated by Hely J in Flexible Steel Lacing Co v Beltreco Ltd:[55]
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, common-sense [sic] manner. Absurd constructions should be avoided and mere technicalities should not defeat the grant of protection.
As a general rule, the terms of a specification should be accorded their ordinary English meaning.
Evidence can be given by experts on the meaning which those skilled in the art would give to technical or scientific terms and phrases and on unusual or special meanings given by such persons to words which might otherwise bear their ordinary meaning.
However, the construction of the specification is for the Court, not for the expert witness. Insofar as a view expressed by an expert depends upon a reading of the patent, it cannot carry the day unless the Court reads the patent in the same way.
[55] Flexible Steel Lacing Co v Beltreco Ltd [2000] FCA 890; 49 IPR 331 at [81] cited with approval in Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag [2008] FCAFC 121; 77 IPR 229.
With regard to what constitutes ‘a workable standard’, consideration should be given to whether a claim provides a reasonable basis by which a third party could, without difficulty, determine whether or not what he proposes to do falls within the scope of the claim. A claim will lack clarity if the standard specified by the terms of the claim would not permit a third party to ascertain whether an act would fall within the scope of the claim.[56]
Segmenting & Partitioning
[56] Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59 at 60.

The Opponent submits that ‘[t]he words “segmenting” and “partitioning” do not appear to be distinguished in claim 1 or the rest of the Opposed Application and appears to be used interchangeably to refer to the same process of separating some points in the point cloud from others.’[57] Unhelpfully, the specification defines ‘segmenting’ as a ‘means to segment’[58] ‘partitioning as a ‘means to partition’.[59]
[57] The Opponent’s Submissions, [177] referring to Thewalt#2, [28], [30].
[58] See, eg, Specification, Abstract, Page 8 Lines 13 – Page 9 Line 14.
[59] See, eg, Specification, Abstract, Page 6, Lines 13-15, Page 12 Lines 7-11.
The Macquarie Dictionary defines ‘partition’[60] and ‘segment’[61] relevantly as follows:
[60] Macquarie Dictionary (online at 28 April 2019) ‘segment’.
[61] Macquarie Dictionary (online at 28 April 2019) ‘partition’.
Partition
noun 1. division into or distribution in portions or shares.
2. separation, as of two or more things.
3. something that separates.
5. a part, division, or section.
–verb (t) 12. to divide into parts or portions.
13. to divide or separate by a partition.
Segment
/ˈsɛgmənt/ (say 'segmuhnt) 1. one of the parts into which anything naturally separates or is naturally divided; a division or section.
2. Geometry
a. a part cut off from a figure (especially a circular or a spherical one) by a line or a plane, as a part of a circular area contained by an arc and its chord, or by two parallel lines or planes.
b. a finite section of a straight line or curve.
/sɛgˈmɛnt/ (say seg'ment) 5. to separate or divide into segments.
–verb (i)
In my view, while the words ‘segmenting’ and ‘partitioning’ are used interchangeably, this does not appear inconsistent with the general usage of these terms.[62] Moreover, when read in context within the specification and the claims, it is apparent what actions are intended to be performed by these terms.[63] Consequently, I do not find the words ‘segmenting’ and ‘partitioning’ to be unclear.
Tilt Correction
[62] Cf Cantarella Bros Pty Ltd v Koninklijke Douwe Egberts B.V. [2018] APO 15 at [161]-[167].
[63] Gram Engineering Pty Ltd v Oxworks Pty Ltd [2019] FCA 689.
The Opponent submits that ‘[t]he use of the term ‘tilt correction’ is unclear and used inconsistently in the Opposed Application.’[64] The Opponent refers to the part of claim 1 where it states ‘point cloud data orientation means, such that the co-ordinate system of the point cloud data aligns with the co-ordinate system of the base reference data’. Dr Thewalt elaborates further:[65]
In paragraph 103 of my 2016 Declaration, I mentioned that the use of the term “tilt correction” in the claim was at odds with the use of the same term in the description, because in the claim “tilt correction” was used to describe registration as a whole, but in the description “tilt correction” is used to describe only separate corrections performed after an initial registration or alignment of the point cloud data with the base reference data…The “tilt correction means” is now stated to include a “point cloud data orientation means” which I take to be the main registration mechanism because [claim 1] states “point cloud data orientation means, such that the co-ordinate system of the point cloud data aligns with the co-ordinate system of the base reference data”. However, in the description the “point cloud data orientations means” is introduced at page 18, line 25, and includes the point cloud data rotation described at page 19 up to the middle of page 20 (including 262 in Figure 2) whereas the “tilt correction means” is introduced later, at page 20 line 20 (267 in Figure 3) and clearly doesn’t include the earlier steps or the “point cloud data orientation means” itself.
[64] The Opponent’s Submissions, [178] referring to Thewalt#2, [32]-[33].
[65] Thewalt#2, [33].
Respectfully, I must disagree. In earlier parts of the specification, other than the portions which Dr Thewalt specifically referred to, includes an explanation of what the ‘tilt correction’ entails.[66] This is in a manner which is not dissimilar to how it is defined in claim 1. On this basis, I do not find the term ‘tilt correction’ to be unclear.
Base reference data being referenced to a coordinate system
[66] See, eg, Specification, Page 4 Lines 10 – 14, Page 5 Lines 4 – 7, Page 6 Line 25 – Page 8 Line 13.
The Opponent raised a number of points in relation to the term ‘base reference data being referenced to a coordinate system’. In essence, the Opponent submits that this term is unclear as it:[67]
a)‘The required relationship between the geometry of the mill and the coordinate system is unclear and undefined.’
b)Claim 1 refers to a ‘system for orientating cloud data’, which comprises ‘point cloud data orientation means’, ‘making the whole claim rather circular.
c)It is unclear whether the parts of claim 1 preceding the statement ‘the system comprising’, are required to be incorporated in the system to fall within the scope of the claim, or whether a system, only needs to be suitable for the operation.
[67] The Opponent’s Submission, [179]-[181].
In relation to point a), in my view, the claim does not specify to what extent, the geometry of the mill needs to be ‘related’ to the coordinate system. In this regard, it is sufficient as long as it can be shown generally, that a relationship exists.
In relation to point b), while I agree that the whole claim is rather circular, I do not agree that this is fatal to giving an interpretation of the scope of claim 1. Rather, it is a logical inference that a system, which comprises point cloud orientation means, will clearly be suitable for orientating cloud data unless there are other integers within the claim suggesting otherwise.
In relation to point c), I have addressed this above.
It follows that I am not satisfied that the term ‘base reference data being referenced to a coordinate system’, renders claim 1 unclear.
Claim 6
The Opponent submits that ‘[t]here appears to be words missing after the word “cylindrical” in the third line of claim 6.’[68] However in claim 6, the term ‘cylindrical’ is mentioned at a second instance, as a 'substantially cylindrical shell’. In my view, while it is regrettable that the term ‘shell’ was omitted at the first instance the term ‘cylindrical’ is mentioned, this is likely resolvable by a person skilled in the art reading the claim as a whole. It follows that I am not satisfied that claim 6 is unclear.
Conclusion on clarity
[68] Ibid [182] referring to Thewalt#2, [122].
Consequently, in light of my reasons above, I am not satisfied that this ground has been made out.
Novelty
It is well established that the test for novelty is as described by Besanko J in Aspirating IP Limited v Vision Systems Limited:[69]
The test for anticipation or want of novelty is the same as that for infringement and generally it is appropriate to ask whether the alleged anticipation would, if the patent were valid, constitute an infringement. That was the test enunciated in Harwood v Great Northern Railway Co (1865) 11 HLC 654; 11 ER 1488 and it has been applied ever since (see, for example, Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 at 235 per Aickin J). To satisfy the test, the prior document or act must involve or incorporate all of the integers of the claim under consideration.
[69] Aspirating IP Limited v Vision Systems Limited [2010] FCA 1061 at [165]. See also Bristol-Myers Squibb Co. v FH Faulding & Co. (2000) 97 FCR 524 at [66]. Pfizer Overseas Pharmaceuticals v Eli Lilly and Company (2005) 68 IPR 1 at [313].
However, the reverse infringement test is not applied by simply asking whether something within the prior art document would, if carried out after the grant of the patent, infringe the invention as claimed. Rather, ‘[i]t must also be shown that the Specification contains clear and unmistakable directions so to use it.’[70] As stated by the Court of Appeal in The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited:[71]
A signpost, however clear, upon the road to the patentee’s invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee.
[70] Flour Oxidizing Company Ltd v Carr & Co Ltd [1908] 25 RPC 428 at 457; See also Canadian General Electric Co Ltd v Fada Radio Ltd (1930) 47 RPC 69.
[71] The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 at [486]. See also ICI Chemicals & Polymers Ltd v Lubrizol Corp Inc (2000) 106 FCR 214 at [51].
The ‘stringency’ upon which a prior art document is to be assessed in relation to novelty is set out in Samsung Electronics Co. Limited v Apple Inc. where the Full Court stated:[72]
It is trite law that, if the alleged paper anticipation is to deprive an invention of novelty, it must clearly disclose each and every essential feature of that invention, as claimed. This principle has its genesis in Lord Westbury’s seminal statement in Hill v Evans (1862) 4 De GF & J 288; 1A IPR 1 at 7 that “the information as to the alleged invention given by the prior publication must, for the purposes of practical utility, be equal to that given by the subsequent patent”, a statement which Lord Reid described in C. Van der Lely N.V. v Bamfords Limited [1963] RPC 61 at 72 as “universally accepted”. The stringency with which the prior disclosure is to be assessed in order to be novelty-destroying has been discussed in a number of decisions in this Court, most notably in Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 and Ramset Fasteners (Aust) Pty Ltd v Advanced Building Systems Pty Ltd (1999) 164 ALR 239 and, more recently, in H Lundbeck A/S v Alphapharm Pty Ltd (2009) 177 FCR 151. It is not necessary to set out the discussion in those cases of the relevant principles. It is enough to note that a prior publication will not amount to an anticipation of an invention claimed as a combination if it discloses some, but not all, of the essential features of that combination.
[72] Samsung Electronics Co. Limited v Apple Inc. [2011] FCAFC 156 at [127].
The Opponent relies on the disclosure of the following software packages, which are commercially available before the priority date.
·Surfacer, Version 10.6 dated 15 January 2001 as demonstrated in several videos (collectively hereinafter ‘Surfacer’),[73] and described further in Mr Schwaderer’s declarations.
·Geomagic Qualify 6, published around 2004 as demonstrated in several videos (collectively hereinafter ‘Geomagic’),[74] as described further in Mr Schwaderer’s declarations.
[73] Exhibit GS-02; Exhibit GS-03; Exhibit GS2-02.
[74] Exhibit GS-04; Exhibit GS-05; Exhibit GS2-03.
Surfacer
To begin, Mr Schwaderer explains that:[75]
I was provided by Metso with a set of point cloud data, and with a CAD model. These were not aligned and were in different coordinate systems. I was told that the task I should try to perform, using software from no later than the middle of 2005, and which was commercially available at that time, was to align/register the point cloud with the CAD model.
After some consideration of the geometries of the surfaces represented by the point cloud and the CAD model I sought some clarification of what was required. It was explained…that the aim was to align the main curved surfaces of the point cloud and the CAD model. It was explained to me that the main curved surfaces were parts of a piece of equipment that needed to be aligned to model the equipment, but that the somewhat planar surface of the point cloud that extended along the length of the point cloud represented an arbitrary height of contents of the equipment that should not affect the alignment of the long curved surfaces.
The long curved surfaces appeared generally cylindrical so I immediately took the view that the most appropriate approach to try was to fit cylinders to the cylindrical parts and to align the surfaces by aligning the axes of the fitted cylinders. This was a well-known way to align or register cylindrical or part cylindrical objects, or scenes that included such objects, well before 2005 and software that was commercially available well before 2005 had standard tools available for this purpose.
[75] Schwaderer#1, [12]–[14].
Mr Schwaderer then advised that he believed that a software product called Surfacer, was available from 2001 onwards and produced by Imageware Solutions Inc. He obtained a copy of surfacer and installed it on a computer running a Windows XP environment as a virtual machine in Windows 7, to accurately simulate Surfacer’s functions before 2005.[76]
[76] Ibid [17]–[20].
Moving on to the demonstration videos, in the first video,[77] exhibit GS-02, Mr Schwaderer refers to the toolbar, and selects the menu option ‘Help’, followed by ‘About Surfacer’ which displays the following panel:[78]
[77] Exhibit GS-02.
[78] Exhibit GS-02, 00:10-00:15; Schwaderer#1, [28].
As foreshadowed above, Mr Schwaderer was provided with point cloud and a CAD model. He was informed that ‘the point cloud is a laser scan from the interior of a minerals comminution mill, and that it represents an inner surface of a liner of the mill, and a charge within the mill…the CAD model is a partial model (the upper half) of the mill from which the laser scan was taken.’[79] The point cloud and CAD model, as shown in the demonstration videos below respectively, as transparent and yellow portions:[80]
[79] Schwaderer#1, [26].
[80] Exhibit GS-02, 00:03.
The next part of the video shows ‘fitting a cylinder to the large curved surface of the CAD model. The central axis of this cylinder corresponds to central axis of the surface modelled by the CAD model.’[81] It is also possible to manually filter out spurious points from the point cloud, as shown on the right side of the point cloud data.[82]
[81] Schwaderer#1, [29]; Exhibit GS2-02, 00:20–02:08.
[82] Schwaderer#1, [31]; Exhibit GS2-02, 03:19.
Mr Schwaderer then goes on to demonstrate the steps of ‘segmentation or partitioning of a generally cylindrical part of the point cloud.’[83] The purpose of this step, is to select a region to which a cylinder is to be fitted[84] and is shown as the portion shaded in yellow below. [85] Mr Schwaderer explains that ‘the fitting of the cylinder to the yellow, cylinder part of the point cloud…is straightforward use of a standard tool of the system.’[86] Moreover, Mr Schwaderer notes that although the white points have been removed from consideration for the purpose of fitting the cylinder, this is a simple process requiring the user to just uncheck the ‘display box’ in the ‘point display panel’, shown on the top right hand corner of the figure above. This step is also temporary as these points can be easily reinstated.[87]
[83] Schwaderer#1, [32].
[84] Ibid [34].
[85] Exhibit GS2-02, 04:55.
[86] Schwaderer#1, [36].
[87] Ibid [37].
Next, Mr Schwaderer perform what is called ‘stepwise registration’, which is ‘the process of fitting primitive geometric shapes to objects (e.g. point clouds) and then aligning or registering the objects by aligning the axes of the primitive geometric shapes.[88] As shown in the figure below,[89] this is performed by first referring to a panel entitled ‘Stepwise Registration’, showing ‘FitCylinder’ and ‘FitCylinderCAd’ as the source and destination elements.[90] Clicking the ‘add’ button results in registration (orientation, including correction of the difference in angle or tilt) of the point cloud relative to the CAD model.[91]
[88] Ibid [38]–[41].
[89] Exhibit GS2-02, 06:02.
[90] Schwaderer#1, [39].
[91] Ibid [41].
Once the stepwise registration has been completed, Mr Schwaderer goes on to show how it would be possible to calculate the ‘[o]ne or more distances between the point cloud and its associated cylinder…these will correspond to distances between corresponding points on the represented surfaces of the modelled objects and/or structure (for example parts of a mill).’[92] Mr Schwaderer also explains that it would be straightforward to create a coloured deviation map:[93]
As demonstrated from about 0:10:00 to about 0:12:15 it was straightforward in SURFACER V10.6 to create a coloured deviation map, or colour plot, showing the deviation between point cloud data (in this case representing the inner surface of a liner) and a reference surface (in this case representing the CAD geometry, the interior surface of the mill shell and the ‘back of liner’ surface). This was a standard and widely used function of SURFACER V10.6 from 2001 onwards.
With knowledge of what the point cloud and CAD geometry represent and how these surfaces are related, it was immediately evident to me that this is an effective way of representing the thickness of the liner, and variations in that thickness. I believe that this would have been immediately clear and evident to any reasonably competent worker in the field well from 2001 onwards.
[92] Ibid [47].
[93] Ibid [49]–[50].
An example of how the deviation map can be adjusted to display deviations above and below a selected threshold in different colours,[94] is shown below:[95]
[94] Ibid [51].
[95] Exhibit GS2-02, 11:52.
At this stage, as shown in the figure below,[96] it is then possible to perform various forms of measurements:[97]
As demonstrated from about 0:12:15 to about 0:16:57 SURFACER V10.6 included the facility for other forms of measurement between a point cloud and a reference surface. For example, selected cross sections could be displayed and deviation or distance measurements between selected parts, including radial distance measurements, could be made and displayed on screen.
[96] Ibid 14:58.
[97] Schwaderer#1, [52].
Selected cross sections could then be displayed to calculate the thickness of the wear liners.[98] While, in Mr Schwaderer’s opinion, surfacer was a powerful software package with functionality that was not widely available, he states that all the functionality referred to in his declaration and video, was also available in other commercially available and widely used programs well before June 2005.[99]
[98] Exhibit GS2-02, 16:30.
[99] Schwaderer#1, [53].
Next, Mr Mr Schwaderer was requested to:[100]
make a video demonstrating the capability of SURFACER V10.6 to calculate the volume of the ‘charge’ or ‘ball charge’ which is loose material inside the mill. The surface of the ball charge is the irregular but generally planar surface in the point cloud shown in Exhibit GS-02 which extends along the axial length of the point cloud.
[100] Ibid [54].
Mr Schwaderer begins with the following caveat:[101]
I strongly believe that the use of the SURFACER V10.6 software demonstrated in EXHIBIT GS-03 amounts to using the tools provided in the software for purposes for which they were intended. I regard the use of the SURFACER V10.6 software demonstrated in EXHIBIT GS-03 as being standard use of the tools that would have been available to, and well known by, a normal worker in the field of point cloud use in or before early 2005, and not to involve any techniques or actions that would have required inventive input by a user at that time.
and that:[102]
The CAD model shown in EXHIBIT GS-02 is not used in EXHIBIT GS-03 as it is not required in order to perform he requested volume calculation. However, if desired the steps taken in EXHIBIT GS-03 could have been performed dafter the steps demonstrated in EXHIBIT GS-02.
[101] Ibid [58].
[102] Ibid [60].
Beginning with the point cloud data, Mr Schwaderer demonstrates how a geometric primitive cylinder is fitted to the cylindrical surface of the point cloud. The cylinder is then extended in length, manually, so that it has substantially the same axial length as the cylindrical surface of the point cloud, and then ‘closed’ by adding planar surfaces at its ends.[103] The cylindrical is shown in the screenshot below, shaded in aqua.[104]
[103] Ibid [62]–[64].
[104] Exhibit GS2-03, 01:03.
Next, ‘the surface which represents the top of the ‘charge’ is segmented from the rest of the point cloud’,[105] shown on the figure to the left below.[106] Notably, there is a hole present in the middle of this surface which corresponds to the location of the sensor used to obtain the point cloud data. A plane is then fitted to this segmented surface, and ‘the plane is wrapped to the geometry of the point cloud surface to provide an interpolated surface which conforms closely to the geometry of the segmented surface representing the top of the “charge”.’[107] This is shown on the figure to the right below, with the cylinder rotated.[108]
[105] Schwaderer#1, [65].
[106] Exhibit GS2-03, 03:40.
[107] Schwaderer#1, [67].
[108] Exhibit GS2-03, 05:15.

At this stage, it is then possible to form ‘a group consisting of the fitted cylinder (as a volume) intersected by the interpolated surface’.[109] After further refinement, it is then possible to request, calculate and display, relevant such as the volume measurement of the defined volume,[110] as shown below:[111]
[109] Schwaderer#1, [68].
[110] Ibid [69]–[73].
[111] Exhibit GS2-03, 09:05.
Because of amendment made during the evidentiary period, Mr Schwaderer was asked to produce a third demonstration video, Exhibit GS2-02. Mr Schwaderer based this third video using the same copy of the point cloud[112] and CAD model,[113] which was used in his previous demonstration videos. After orientating the point cloud data to the CAD model, Mr Schwaderer proceeds to splitting, segmenting or partitioning (these terms are used interchangeably) the point cloud into four segments.[114] The four segments corresponds to the mill contents surface, the first and second ends of the scanned liner surface, and the cylindrical part of the scanned liner inner surface.[115] This is shown below, with three of the segments shaded in white on the top, and opposing sides, of the point cloud, and the forth segment shown in blue.[116]
[112] Schwaderer#2, [11].
[113] Ibid [12].
[114] Ibid [23]–[24].
[115] Ibid [23].
[116] Exhibit GS2-02, 03:25.
Selecting the blue segment, Mr Schwaderer demonstrates that it is possible to remove portions of a segment, particularly where said segment may be a little rough and could potentially disturb the surface fitting.[117] It is then possible to fit a cylinder to the remaining part of the segment, as shown below:[118]
[117] Schwaderer#2, [24]–[27].
[118] Exhibit GS2-02, 04:55.
Mr Schwaderer states that ‘[f]itting a cylinder provides an axis for the cylindrical segment of the point cloud which makes it very easy to align the point cloud with the CAD model by aligning the respective axes using the “stepwise registration” function available in SURFACER V10.6.’[119] Once the cloud point and CAD model are in registration, it is then possible to restore any of the temporary removed points or segments.[120] Mr Schwaderer explains that:[121]
[s]electing which points in a point cloud to use for finding an axis or fitting a cylinder (or other shape) in order to provide a good result was very common at least as far back as 2001, and deselecting or removing of points which would be expected to make the fit less accurate was standard practice. The deselected or removed points would often be saved and recombined with the rest of the point cloud after the fitting, as they often included information about the scene that was scanned. Therefore the temporary removal of points from consideration and later restoration of those points into the point cloud was very common long before 2006.
[119] Schwaderer#2, [27].
[120] Ibid [28].
[121] Ibid [29].
To address any of the features which have been incorporated because of the amendments, Mr Schwaderer was asked to provide the following information:[122]
At this stage the other axes of the coordinate system of the point cloud data do not align with the other axes of the coordinate system of the CAD model, but these can be aligned, so that the point cloud is transformed into the same coordinate system as the CAD model, by rotation of the point cloud (relative to the CAD model) about the x axis, translation of the point cloud (relative to the CAD model) along the x axis and, if necessary reversal of the ‘direction’ of the point cloud. These functions and operations are demonstrated between about 0:06:47 and 0:09:50 in exhibit GS-02 appended to my 2016 Declaration.
I was asked to comment on whether the CAD model describes the geometry of the reference surface, including parameters such as the location of the central longitudinal axis, the cylindrical radius and the cylindrical length. I responded that although a generally half-cylindrical CAD model was used, it appears very clear that the other half corresponds, and that the CAD model unambiguously defines the geometry of the reference surface, including the location of the central longitudinal axis, the cylindrical radius and the cylindrical length.
In relation to ‘restoration’ of the points which were temporarily removed I was asked whether I believe that grouping together the segment defining this subset of points with other segments of the point cloud amounted to restoration of the points. I responded that I do not believe that this amounts to restoration. I further commented that an available and easily accessible function in SURFACER V10.6 option was to combine two point clouds (or point cloud segments, so that if it was desired to recombine the “temporarily removed” strip of points with the rest of the cylindrical segment, into a single segment or point cloud, this would have been extremely straightforward. Specifically, a dropdown menu from the ‘Point’ tab, provides a ‘Create from Clouds’ option, which in turn provides an ‘Add Point Clouds’ option, which allows point cloud (or segments) to be highlighted and combined. I therefore have no doubt that the SURFACER V10.6 software provides ‘restoration’ of temporarily removed points as a standard option, and this option was commonly used.
[122] Ibid [33]–[35].
Geomagic
The video demonstration of Geomagic Qualify 6 is produced by Mr Schwaderer, and is based on the version of the software released in 2004,[123] and running in a similar environment to the Surfacer demonstration.[124] Notably, while aesthetically distinct, Geomagic is logically operated in a similar manner to Surfacer. Thus, it follows that some of Mr Schwaderer’s explanation above on the reason why certain steps are performed in Surfacer, also apply to Geomagic. In the first video,[125] Exhibit GS-04, Mr Schwaderer bring up the menu option ‘about’ to display some further information. Notably, the copyright notice accompanied with the range ‘1996-2003’, and the software version ‘SR 2’ is listed alongside ‘2004_08_03_A’ which appears to be a date. This panel is shown below:[126]
[123] Schwaderer#1, [74].
[124] Ibid [75].
[125] Exhibit GS-04.
[126] Ibid 00:07.
First, the cloud point is prepared by cleaning up spurious points. This may be performed manually via use of a ‘lasso’ tool, shown on the top left area of the screenshot below:[127]
[127] Ibid 00:43.
Second, the point cloud is fitted to a cylinder, and aligned to an axis. The cylinder is shown shaded in orange below:[128]
[128] Ibid 01:25.
Next, the point cloud can be aligned with the CAD model, as shown in the first picture below.[129]
[129] Ibid 01:53.
Alignment is performed using a ‘Datum/ Feature Alignment’ tool, and manually adjusted, as shown below:[130]
[130] Ibid 02:12.
To calculate the thickness of the wear liner, first a cross section or segment is selected:[131]
[131] Ibid 03:54.
From this section, it is then relatively straightforward to calculate various distances, indicative of the thickness of the wear liner:[132]
[132] Ibid 05:15.
Next, Mr Schwaderer shows that it is possible to display a colour averaging, which is indicative of the actual distances:[133]
[133] Ibid 06:08.
This allows each measurement point to be displayed, shown below on the left,[134] or with the test objection also displayed, shown below on the right:[135]
[134] Ibid 06:28.
[135] Ibid 06:32.
It is also possible to select individual areas of the point cloud to be calculated:[136]
[136] Ibid 07:50.
Next, Mr Schwaderer isolates a two-dimensional segment to demonstrate an alternative manner in which the calculation could be performed:[137]
[137] Ibid 09:02.
Further, Mr Schwaderer creates another video in which he first demonstrates how to clean up the cloud point to reduce noise, before proceeding to perform a volume calculation:[138]
[138] Exhibit GS-05, 04:18.
In response to amendments filed during the present proceedings, Mr Schwaderer was requested to create another video. He provides some limited comments on the contents of the video:[139]
[139] Schwaderer#2, [40].
EXHIBIT GS2-03 demonstrates temporary removal of points from the top of the cylindrical point cloud segment from about 0:01:56 to about 0:02:01. As can be seen, the Geomagic Qualify 6 software allows ‘deselection’ of points from a point cloud (or segment of a point cloud) without the need to segment the deselected points. At 0:01:56 the cylindrical segment of the point cloud is selected (with the other segments of the point cloud hidden from view) and shown in red. At 0:02:00 a selection of points, in this case a strip of points, is deselected, or ‘temporarily removed’ from consideration, so that the deselected points are not shown as red, while the selected (non-removed) points of the cylindrical segment remain shown in red. At about 0:02:14, a cylinder is fitted to the selected (non-removed) points and at 0:02:16 the axis can be seen. At about 0:02:19 to 0:02:20 the ‘ok’ button is clicked, which restores the temporarily removed points.

100. This is shown in the screenshot below:[140]
[140] Exhibit GS2-03, 02:15.

101. Mr Schwaderer further states that ‘[e]xhibit GS2-03 demonstrates volume measurement of the mill contents based on segmentation of the points attributable to the loose objects from about 0:03:54 onwards.’ Mr Schwaderer demonstrates various steps required to prepare the cloud point, including cleaning spurious points, and concludes by calculating the volume:[141]
[141] Ibid 09:00.
Conclusion on Surfacer and Geomagic
102. As I foreshadowed above, the claims would be anticipated for lack of novelty in light of Surfacer or Geomagic, if it can be shown that the prior art discloses a system comprising all the integers of the second element, but was designed in such a manner, that it’s normal and intended use must contemplate operating within the environment defined by the parameters of the first element. At the hearing, the Opponent directed me to Novozymes A/S v Danisco A/S (Novozymes), where Jessup J stated:[142]
[142] Novozymes A/S v Danisco A/S [2013] FCAFC 6; 99 IPR 417 at [108].
I cannot see anything in the authorities that would require the prior citation to have made explicit the chemical features of the ingredient produced by the reaction disclosed where the skilled addressee would have perceived the existence of those features from his or her reading of that citation. Just as the photograph considered by the House of Lords in C Van der Lely NV v Bamfords Ltd [1963] RPC 61 did not need to portray a mechanism in which the turning of the wheels was activated by contact with the ground because the skilled addressee would have perceived that that was the intended method of working, so too here it would be sufficient if the skilled addressee were able to perceive that the monoglyceride in terms disclosed in the Johnson patent was working as an emulsifier point.

103. From the onset, this is similar to the present matter and is satisfied by the demonstration videos produced by Mr Schwaderer and his accompanying commentary. Moreover, Mr Schwaderer indicated that the steps he performed to calculate the thickness of the wear liner, and volume measurements, ‘do not involve any techniques or actions which would have required inventive input by a user at that time’,[143] Mr Schwaderer has also used Surfacer and Geomagic, ‘for purposes which they were intended.’[144] In the absence of any contrasting evidence, I see no reason why the evidence provided by Mr Schwaderer should be offended.
[143] Schwaderer#1, [24]; [58]; [79].
[144] Ibid [24]; [58].
104. However, while Mr Schwaderer might have understood what Surfacer and Geomagic could be used for, it is not apparent whether they were actually used, in the same manner as with the claimed invention.[145] In my view, neither Surfacer nor Geomagic provides a set of explicit instructions, guidelines, or features, which would perform all the steps of the claimed invention. Although each step in the video may logically follow one after another, this is not without requiring additional external input.
[145] See, eg, Australian Mud Company Pty Ltd v Globaltech Corporation Pty Ltd [2018] FCA 1839; 138 IPR 33.

105. In this regard, while Mr Schwaderer ‘might well have thought that such an outcome was within the range of reasonable possibilities,’ the question is whether there was ‘a clear direction, even an implicit one, towards that outcome.’[146] It is settled law that for a disclosure to anticipate a claim, there must be clear and unmistakable direction such that an outcome would not be merely fanciful, but is inevitable regardless of whether a skilled addressee had been expressly or implicitly instructed to seek it.[147] I am not satisfied that this is the case here.
[146] Novozymes A/S v Danisco A/S [2013] FCAFC 6; 99 IPR 417 at [143].
[147] See, eg, Daiichi Sankyo Company Limited v Alethia Biotherapeutics Inc. [2015] APO 88. Saint-Gobain Isover v Knauf Insulation GmbH [2015] APO 48. Inter Aqua Advance A/S v Bent Urup Holding ApS [2018] APO 43.
106. It follows that I should find that claim 1 does not lack novelty in light of Surfacer or Geomagic. The same consideration also applies to claim 2. Moreover, as neither Surfacer or Geomagic provides an indication of, or discloses, the formulas used, claims 3 – 7 are novel in light of Surfacer or Geomagic.
Inventive Step
107. In Albany Molecular Research Inc v Alphapharm Pty Ltd, Jessup J conveniently laid out the relevant principles applying to Section 18(1)(b)(ii) for lack of inventive step:[148]
[148] Albany Molecular Research Inc v Alphapharm Pty Ltd [2011] FCA 120; 90 IPR 457 at [152].
Armed with common general knowledge, and possibly also with one of the kinds of information referred to in s 7(3), the invention in question will have been obvious to the skilled person referred to in s 7(2) if he or she “faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not”: Wellcome Foundation Limited v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262, 286; Aktiebolaget Hassle v Alphapharm Pty Ltd (2002) 212 CLR 411, 432 [50]. The content of the concept of “a matter of routine” approved by the High Court in the latter case was that provided by Graham J in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157, 187-188:
Would the notional research group at the relevant date, in all the circumstances, which include a knowledge of all the relevant prior art … directly be led as a matter of course to try [that which was invented under the patent in suit] … in the expectation that it might well produce [the solution to the problem which gave rise to the invention in suit]?

108. Where the invention involves a combination of integers, obviousness is to be determined by reference to the combination as a whole and not each integer individually:[149]
[149] Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59; 212 CLR 411 at [41]. See also Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9; 144 CLR 253.
the interaction between the integers of which is the essential requirement for the presence of an inventive step. It is the selection of the integers out of "perhaps many possibilities" which must be shown by [the Respondent] to be obvious, bearing in mind that the selection of the integers in which the invention lies can be expected to be a process necessarily involving rejection of other possible integers.

Problem to be solved and Common General Knowledge
109. To determine whether an invention would be obvious in light of common general knowledge, a useful test that should be applied is the Cripps question which can be simplified to:[150]
[150] Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157 at [187]–[188]. The question was endorsed in Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59; 212 CLR 411 as a ‘reformulation of the Cripps question’. See also Nichia Corporation v Arrow Electronics Australia Pty Ltd [2019] FCAFC 2 at [65]–[80] where ‘the context of the specification as a whole are relevant to the appropriate formulation of the Cripps question in a given case. A “useful alternative” is one which is useful compared to the prior art in the field of the invention. A thing “useful for any other purpose” is also to be understood in this context.’
Would the person skilled in the art (in all the circumstances) directly be led as a matter of course to try the claimed invention in the expectation that it might well produce a solution to the problem?

110. Moreover, it is not sufficient to establish common general knowledge solely by reference to a publication. Rather, it must be shown that the information contained in the publication formed part of the common general knowledge. This principle is set out in Ranbaxy Laboratories Limited v AstraZeneca AB where Middleton J stated:[151]
[151] Ranbaxy Laboratories Limited v AstraZeneca AB [2013] FCA 368 at [217]–[218].
As I noted in Eli Lilly [2013] FCA 214, 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], citing British Acoustic Films (1936) 53 RPC 221 at 250 (which was also affirmed in General Tire (1971) 1A IPR 121 at 135). Reference in this regard is made to the words of Luxmoore J in British Acoustic Films (1936) 53 RPC 221 at 250, cited by Lehane J in Aktiebolaget Hässle v Alphapharm Pty Ltd (1999) 44 IPR 593; [1999] FCA 628 at 605 [39]:
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.
In Alphapharm (2008) 76 IPR 618; [2008] FCA 559, Lindgren J observed that (at 667 [221]):
[I]t was held in Astra that information recorded in a document, even a document widely circulated within the art, is not part of general common knowledge merely because the skilled addressee could be expected to locate it. The question is whether it is “‘generally accepted without question”‘ or “‘generally regarded as a good basis for further action”‘ by the bulk of those in the art.

111. This concept was reiterated in Meat & Livestock Australia Limited v Cargill, Inc, where Beach J stated:[152]
[152] Meat & Livestock Australia Limited v Cargill, Inc [2018] FCA 51 at [688].
There is also a further point to be made concerning common general knowledge. There is no general principle permitting admissions in the specification of a patent to be used to establish in and of themselves that information is common general knowledge. Whether information has become so widely assimilated that it forms part of common general knowledge must be determined on the evidence, although admissions can be considered as part of that evidence.

112. As outlined above, the specification resides, generally, in the comminution of mineral ore in large rotating cylindrical mills. As the mill is operated, the secondary grinding system and the liner will eventually wear down and need to be replaced. It is therefore important to accurately measure the rate and degree of wear, to optimise the operation of the mill.[153] The specification then goes on to state that ‘[i]t is an object of the present invention to ameliorate, mitigate or overcome, at least one of the aforementioned problems associated with prior mill measurement, or to at least provide the public with a useful choice in an alternative system for mill measurement.’[154]

[189] Ibid pages 4: Visualisation and Analysis.
138. Helpfully, Dr Thewalt has provided a table indicating where each integer of claim 1 is disclosed in the Curtin Paper.[190] The Opponent submits that the Curtin Paper ‘discloses, mostly explicitly, otherwise implicitly, all the features of claim 1 with the exception of the “non-fixably connected volume measurement means”’.[191] However, Dr Thewalt states that ‘volume measurement of loose material was standard and well known functionality of commercially available point cloud software, including Cyclone, well before 2006.’[192] Mr Furtenbach adds that:[193]
[190] Thewalt#2, [59].
[191] The Opponent’s Submission, [147].
[192] Thewalt#2, [60].
[193] Furtenbach, [39].
[I]t was well known that the volume of the ball charge could be a useful measurement and it was common to measure the volume of the ball charge by simple geometric techniques given that the overall shape of the mill interior was cylindrical. For example, a measurement of the height between the ball charge surface and the topmost part of the mill interior was often used to measure the ball charge volume. Other methods, such as comparing the number of lifter bars visible above the ball charge surface with the total number of lifter bars of the mill lining, were also in used.

139. Mr Furtenbach also states that he ‘believe that everyone competent in mill liner replacement and measurement would have been familiar with this information.’[194] Noting that I have no contrasting evidence to rely upon, I see no reason not to accept the explanations of Mr Furtenbach and Dr Thewalt. Moreover, Dr Schwaderer has shown how volume measurement calculations could be performed in Surfacer and Geomagic. Generally, I accept that it would appear counterintuitive in my view, for a software to omit such a desirable and conventional feature.
[194] Ibid [40].
140. On the topic of data editing means, Dr Thewalt refers to product information sheets, the Leica HDS3000 and Cyrax 2500 laser scanners,[195] which I understand are scanners designed to operate with Cyclone – scan software. According to the information sheets:[196]
[195] Exhibit CT2-04.
[196] Thewalt#2, [77].
The capabilities of this software, as specified on the information sheets, included filtering “based on: Area of interest via rectangular or free-form polygonal areas; Region around picked points; Range; Return intensity” (emphasis added). The information sheet for the Leica HDS3000 is dated 2004, which I strongly believe is accurate. The information sheet for the Cyrax 2500 would have been published before 2004, as the Cyrax 2500 was an earlier product, and the CYRAX branding, which was phased out by or in 2004, is prominent.

141. Dr Thewalt explains that ‘[f]iltering of point clouds to remove unwanted points was very common practice in commercially available software, well before the priority date’,[197] and considers that all of the filtering means included in claim 2 are obvious.[198]
[197] Ibid [78].
[198] Ibid [78]-[84].
142. However, it must be noted that the system disclosed by the Curtin Paper utilises ‘Curtin’s own software’, which would functionally operate in a different manner to any other software which may be available on market. As is the nature with proprietary software, the algorithms behind how the system operates is confidential in nature and unlikely to be readily disclosed.[199] It is therefore unsurprising that the Curtin Paper is brief on the specifics behind how this software operates. Noting the importance of performing volume measurement calculations, it is reasonably foreseeable that if present, this feature would be actively promoted in the Curtin Paper. As this is not the case, I am unable to be satisfied that it would be obvious to implement this feature.[200]
[199] See, eg, Career Step, LLC v TalentMed Pty Ltd (No 2) [2018] FCA 132; 354 ALR 300; 129 IPR 70.
[200] See, eg, RTI Pty Ltd v Scantech International Pty Ltd [2016] APO 28 where although a C-shaped housing might have been known, there was no evidence to suggest that it would have been obvious to implement it in an analyser.
143. Consequently, on balance, I am satisfied that claim 1 has an inventive step in light of the Curtin Paper. It follows that the same consideration applies to all of the dependent claims.
Harvill and Specialty Minerals
144. Like the above, Dr Thewalt has helpfully provided a table indicating where each integer of claim 1 is disclosed in Harvill and Specialty Minerals.[201] Both documents do not teach or suggest that the measurement is applied to a mill, or that volume measurements can be calculated. Dr Thewalt is of the opinion that as both Harvill and Specialty Minerals utilise the same measurement principles, there would be nothing preventing a person skilled in the art from applying it to a mill.[202] However, nothing further is said. Consequently, I am unable to be satisfied that on balance, claim 1 lacks an inventive step in light of Harvill or Specialty Minerals. It follows that the same consideration also applies to all the dependent claims.
[201] Thewalt#2, [64]-[73].
[202] Ibid [72]; [74].
Best Method
145. Section 40(2)(aa) of the Act requires that a complete specification must ‘disclose the best method known to the applicant of performing the invention’. To my best knowledge, this ground is in desuetude and to date, been addressed in a small number of Patent Office decisions.[203]
[203] See, eg, Kineta, Inc. [2017] APO 45; EnGene IC Pty Ltd v Vaxiion Therapeutics, LLC [2018] APO 6; Cytec Industries Inc. v Nalco Company [2018] APO 4; Merial, Inc. v Bayer New Zealand Limited [2018] APO 14.
146. In Vidal Dyes Syndicate Ltd v Levenstein Ltd, Fletcher Moulton LJ said:[204]
[204] Vidal Dyes Syndicate Ltd v Levenstein Ltd (1912) 29 RPC 245 at 269 cited with approval in Firebelt Pty Ltd v Brambles Australia Ltd & Ors [2000] FCA 1689; 51 IPR 531. See also Sandvik Intellectual Property AB v Quarry Mining & Construction Equipment Pty Ltd [2016] FCA 236; 118 IPR 421.
It is settled law that a patentee must act towards the public uberrima fide, and must give the best information in his power as to how to carry out the invention. He is therefore bound to tell the public all the steps that can advantageously be taken in carrying out the invention. But he is not limited to claiming only the best way of carrying it out.

147. However, what is required to provide a best method of performing the invention will depend on the facts of the case. As stated by the Full Court in Les Laboratoires Servier v Apotex Pty Ltd (Servier):[205]
[205] Les Laboratoires Servier v Apotex Pty Ltd [2016] FCAFC 27; 247 FCR 61 at [129].
It can be accepted that there are cases where the claim is to a product or class of products and the best method requirement is satisfied by a description of the best embodiment known to the patentee at the relevant time. It can also be accepted that there are cases where the claim is to a product and there is no requirement to provide a method of using that product. It is also the case that there is no requirement actually to have carried out the best method and that a prediction will suffice (New England Biolabs, Inc v Hoffmann-La Roche AG [2004] FCA 1651; (2004) 63 IPR 524 at [33]). However, it is necessary to understand the invention itself [Expo-Net Danmark A/S v Buono-Net Australia Pty Ltd (No 2) [2011] FCA 710]. As was succinctly stated by Lord Hoffman in Kirin-Amgen Inc. v Hoechst Marion Roussel Limited [2005] RPC 9 at [104]:
‘in order to decide whether the invention has been fully enabled, you first have to decide what the invention is’.

Lord Hoffman was there addressing the sufficiency requirement, but the observation applies equally to the best method requirement. The nature of the invention will determine what is “best” in the circumstances.

148. It must also be established, that the Applicant was aware of a better method of performance at the filing date of the application. In Dometic Australia Pty Ltd v Houghton Leisure Products Pty Ltd, White J, with reference to Pfizer Overseas Pharmaceuticals v Eli Lilly and Company (Pfizer)[206] and Rescare Ltd v Anaesthetic Supplies P/L (Rescare),[207] reaffirmed this position:[208]
[206] Pfizer Overseas Pharmaceuticals v Eli Lilly and Company [2005] FCAFC 224; 68 IPR 1.
[207] Rescare Ltd v Anaesthetic Supplies P/L [1992] FCA 811; 111 ALR 205.
[208] Dometic Australia Pty Ltd v Houghton Leisure Products Pty Ltd [2018] FCA 1573; 135 IPR 403 at [229].
However, the position stated in Rescare was clarified by French and Lindgren JJ in Pfizer. Their Honours noted a distinction between the date at which the best method known to the applicant is to be identified, on the one hand, and the date by which the specification’s full description of the invention must include a disclosure of it, on the other, at [375]. Later, at [378], French and Lindgren JJ noted that in Rescare, Gummow J had been concerned with the first of these dates, namely, the date at which the best method known to the applicant for the patent was to be identified. Their Honours went on to confirm that it is the best method known to the applicant at the filing date which must be disclosed in the complete specification, at [375], [379]:
Lest there be any doubt, we would make it clear that s 40(2)(a) requires an applicant for a patent to disclose in the complete specification at the time of filing it the best method of performing it known to the applicant at that time: compare C Van Der Lely NV v Ruston’s Engineering Co Ltd [1993] RPC 45 at 56 and Rediffusion Simulation Ltd v Link‑Miles Ltd [1993] FSR 369 at 405, which were decided on ss 4(3)(b) and 32(1)(h) of the Patents Act 1949 (UK).

In each of Rediffusion Simulation and Van Der Lely NV, it had been held that the English counterpart of s 40(2)(aa) required disclosure of the best method known to the applicant at the time when the complete specification was filed.

149. White J further noted that the above conclusion is supported by the Full Court in Servier,[209] and for the following reasons:[210]
[209] Les Laboratoires Servier v Apotex Pty Ltd [2016] FCAFC 27; 247 FCR 61 at [114].
[210] Dometic Australia Pty Ltd v Houghton Leisure Products Pty Ltd [2018] FCA 1573; 135 IPR 403 at [231]-[233].
Secondly, the statutory scheme supports the conclusion. By s 29(1) of the Act, a person may apply for a patent for an invention by filing in accordance with the regulations a patent request and such other documents as are prescribed. By s 29(4), a patent request in relation to a complete application must be in an approved form and accompanied by “a complete specification”. The term “complete specification” is defined in the Dictionary in Sch 1 to the Act to mean “a specification filed in respect of a complete patent application or, if the specification has been amended, the complete specification as amended”. Section 40(2) is concerned with the content of a complete specification. The remaining subsections in s 40 also impose obligations with respect to the complete specification. They do so in a manner suggesting that compliance is required at the time of filing of the specification. That scheme suggests naturally that, putting to one side the possibility of subsequent amendment, the disclosure required by s 40(2)(aa) must occur in the complete specification when it is filed.
Thirdly, in respect of the requirements of s 40, the High Court in Kimberly-Clark said:[211]
[211] Kimberly Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8; 207 CLR 1 at [5].
[5] [G]rounds such as lack of fair‑basing, inadequate disclosure, ambiguity and the like are to be determined in this litigation … under the Patents Act … and by reference to the terms of the Patent as granted.

(Emphasis added)

Houghton accepted that the date at which the knowledge of an applicant is to be assessed is the filing date but submitted that this was to be understood as the date which provides the “date of the patent”, that is, the date from which the exclusive rights commence to run. This would mean in the present case that it is the knowledge of the Patent by the person lodging the PCT application which is to be assessed. In the light of the decisions in Pfizer and in Servier and the matters referred to above, I do not accept Houghton’s submission.

150. White J concluded and proceeded on the basis that for a divisional application, the relevant date for the purposes of section 40(2)(aa) is the filing date of the respective divisional application. Therefore, I understand that I must determine whether the Applicant has disclosed the best method of performing the invention, on the filing date of the present divisional application of 1 May 2014.[212]
[212] See also Kineta, Inc. [2017] APO 45 where Deputy Commissioner Barker came to the same conclusion.
151. The Opponent’s submits that ‘[t]he specification does not teach how to obtain a laser scanner that would be suitable. The inventors were aware of at least one suitable model of laser scanner, but this is not taught by the specification.’[213] To support this assertion, the Opponent refers to the following paper (Millmapper):[214]
[213] The Opponent’s Submission at [166].
[214] Exhibit CT-15.
152. Relevantly, Millmapper is authored by the same three people named as inventors on the present Application. The Opponent refers to the following passage in the Millmapper:[215]
[215] Exhibit CT-15, Page III-86. Opponent’s Submissions, [167]. Thewalt#1, [180]-[181].
It is important to remember that the measurements from any instrument (ultrasonic probe or laser scanner) are subject to both random and systematic errors. Whilst the former can not be controlled and only modeled stochastically, the latter are deterministic and can be modelled and removed. Though laser scanners are complex instruments, we have developed in-house methods, error models and software for their calibration (Lichti and Franke, 2005; Lichti and Licht, 2006). This is an absolutely critical component to the thickness gauging methodology described herein; without it laser scanners would not likely be useful for mill liner thickness gauging. By using our self-calibration procedure, the overall accuracy improvement can be as high 80%, allowing millimeterlevel positioning to ranges up to 10 m. Further details can be found in Lichti and Franke (2005) and Lichti and Licht (2006).

(emphasis added by Opponent)

153. Dr Thewalt was asked whether he saw any ‘”methods, error models and software for [their] calibration” of laser scanners’ in the specification.[216] Dr Thewalt responded that he did not, and that ‘[t]he only mention of scanner error in the specification is due to intensity of the return, as discussed on page 16, starting at line 15, but that is not what these two papers are about’.[217]
[216] Thewalt#1, [184].
[217] Ibid [185]. The second paper referred to by Dr Thewalt is filed as Exhibit CT-16.
154. Further, and alternatively, the Opponent also refers to Australian Patent Application AU 2012261556, filed on 6 December 2012, and lists the same applicant and inventors as the present application. The main thrust of the Opponent’s argument is that the ‘Opposed Application relies of eigenvalue decomposition of the covariance matrix to provide an initial estimate of the major axis of the point cloud data’.[218] However, Dr Thewalt is of the view that ‘the use of eigenvalue decomposition is primitive compared to other known approaches.’[219] Such an approach is disclosed in AU 2012261556, and ‘represents an updated approach and does not require the “significant correction of the orientation” referred to by Dr Thewalt.’[220]
[218] The Opponent’s Submission at [171].
[219] The Opponent’s Submission at [171]; Thewalt#2, [99].
[220] The Opponent’s Submission at [172]; Thewalt#2, [99].

155. Dr Thewalt states:[221]
[221] Thewalt#2, [99].
In my opinion there were likely better options available, and commonly known, for estimating or determining the axial direction of the generally cylindrical set of point cloud data described in the specification than eigenvalue decomposition. The approach described in the specification, using eigenvalue decomposition, is primitive compared to other approaches that were well known and included in commercially available software in 2004 and 2006. The primitive approach of using eigenvectors as an initial estimate of the orientation of the cylinder, as set out on pages 19 to 20 of the specification (and claim 3) appears to be the reason why significant correction of the orientation, called "tilt-correction" in the description, as described on pages 21 to 23 (and claim 4) is needed. Manually segmenting the cylindrical part of the point cloud and using robust cylinder fitting would have provided a significantly more accurate initial alignment determination for the cylindrical part of the point cloud, have been less sensitive to spurious or asymmetrically missing data (such as that due to the scanner structure obscuring parts of the scanned cylindrical surface) and avoided all or much of the need for substantial subsequent corrections to the determined orientation.

156. As an initial point, I feel obligated to reiterate, that the present opposition is plagued with an absence of opposing evidence, or submissions from the Applicant. In any event, I must respectfully disagree with the Opponent that the Applicant’s reliance on eigenvalue decomposition, indicates that the Applicant had withheld a better method of performing the invention. While I do not disagree that there are likely better options available, as Dr Thewalt has suggested, the Opponent has not provided any evidence which establishes that the specific method disclosed in AU 2012261556 is clearly preferred by the Applicant. Consequently, on balance, I am unable to determine that this alternative approach, which does not use eigenvalue decomposition of the covariance matrix, is the best method known to the applicant at the relevant time.
157. However, it is difficult for me to ignore the statement made in Millmapper that ‘[t]his is an absolutely critical component to the thickness gauging methodology described herein; without it laser scanners would not likely be useful for mill liner thickness gauging’. It is neither far-fetched nor fanciful, that this statement is an indication of a reasonably real competitive advantage as the laser scanner is an integer part of the system.[222] The Applicant appears to be at least aware of the need to calibrate the laser scanner and have developed some manner in which to do so. To do otherwise, appears to render the laser scanner unlikely to be useful for mill liner thickness gauging.
[222] Canvas Graphics Pty Ltd v Kodak (Australasia) Pty Ltd [1995] FCA 1346.

158. Nevertheless, no information is provided in the Curtin Paper which describes how this is done. Noting that the need to calibrate an instrument appears to be an essential step before said instrument can be used, it does not appear plausible in my view, that there would be no way of adequately calibrating a laser scanner, except by using software which the Curtin Paper alludes to.[223] On this basis, I consider that the language and nature of this statement is likely to be suggestive of an advertisement amounting to mere puffery.[224]
[223] Flogineering Pty Ltd v Blu Logistics SA Pty Ltd [2018] FCA 1479.
[224] See, eg, REA Group Limited v Fairfax Media Limited [2017] FCA 91. Procter & Gamble Australia Pty Limited v Energizer Pty Limited [2011] FCA 1347. Optus Mobile Pty Ltd v Telstra Corporation Limited [2018] FCA 745.
159. Consequently, on balance, I am unable to be satisfied that the specification does not comply with section 40(2)(aa).
Manner of Manufacture
160. In Smith & Nephew Pty Ltd v Wake Forest University Health Sciences, Finn, Bennett and Middleton JJ defined a collocation to be:[225]
[225] Smith & Nephew Pty Ltd v Wake Forest University Health Sciences [2009] FCAFC 142; 82 IPR 467 at [16]. See also Advanced Building v Ramset [1998] HCA 19; 194 CLR 171 at [12].

A mere collocation of parts, each performing its own separate function, is not patentable. However, a claim may validly combine a number of elements which interact with each other to produce a new result or product. Such a combination may be one constituted by integers each of which are old, or by integers some of which are new, the interaction being the essential element: Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9; (1980) 144 CLR 253 at 266 per Aitkin J, and Firebelt Pty Ltd v Brambles Australia Ltd [2002] HCA 21; (2002) 188 ALR 280 at [21].

161. The Opponent submits that:[226]
[226] The Opponent’s Submission at [174]-[175].
The alleged invention as claimed in any of these claims is not a manner of manufacture because the system claimed comprises merely known 3D laser scanners combined with known point cloud analysis software for the very purpose for which those two things are adapted.

The alleged invention as claimed constitutes a mere collocation of known features, the combination of which was known and/or obvious at the Priority date, and which do not provide any surprising advantage or any novel working interrelationship between them. On the basis of the data provided in the specification and the evidence, each feature of the claim is merely performing its normal function and is not functionally dependent on any other part in any novel way.

162. In my view, although the individual integers may be known or reside in a series of rational steps, there is a clear working interrelationship with each other. For example, the physical integers are required to obtain raw data, which are then subjected to a series of steps to transform the data into useful information. It is difficult for me to view this any other way and respectfully, I must reject the Opponent’s assertion. Consequently, I am not satisfied that there is no working interrelationship between all the integers of the claimed invention.
Costs
163. It is usual in matters before the Commissioner that costs should follow the event. As the opposition is unsuccessful, it typically follows that I should award costs according to schedule 8, against the Opponent. The present matter is unusual as the Applicant did not seek to file any evidence or submissions during the opposition period. In the period leading up to the hearing date, the Applicant provided an impression to the effect, that the parties were in advance negotiations, and the hearing date is likely to be vacated. No further information was provided.
164. After close of business on the 12 March 2019, the day before the hearing, the Applicant filed the following submission:
Further to our conversation earlier today, I confirm that the Applicant has decided to proceed with the Hearing as currently scheduled for 10am 13 March 2019 in the offices of IP Gateway, Springwood QLD.
The Applicant respectively submits that the claims as they currently stand remain novel and inventive over the prior art of record and the Opponent’s submissions as confirmed 6 times through initial acceptance of the application and 5 sets of voluntary amendments made to the claims throughout these opposition proceedings.
In the event that the Applicant is successful under section 59 of the Patent Act, the Applicant hereby applies for an award of costs as per the items allowed in Schedule 8 of the Patent
Regulations 1991.

165. As the Applicant had not filed any evidence or submissions, and was not in attendance at the hearing, it is not clear to me what costs could be awarded against the Opponent. Nevertheless, in my view, the Applicant’s conduct had cast a veil of uncertainty over the general conduct of the Opposition proceeding to the effect that significant resources would have been allocated to preparation of a hearing which may ultimately, be no longer required.[227] Noting that the Notice of Opposition was filed on 17 December 2015, it is unclear to me, why the Applicant did not commence negotiations with the Opponent until such a late stage of the Opposition process.[228] This, combined with the absence of any evidence or submissions filed by the Applicant, essentially forced the Opponent to prepare their case with a presumption of what the Applicant may, or could serve in rebuttal.[229]
[227] OmniAcitve Health Technologies Limited v Inexa, Industria Extractora C.A. [2013] APO 32.
[228] Statens Serum Institut v Octapharma AG [2004] APO 23.
[229] Mars, Incorporated v Société Des Produits Nestlé S.A. [2014] APO 43.
166. Such circumstances may warrant that costs be varied. In some instances, the Commissioner may vary the amount listed in Schedule 8 by a factor if the boundaries of a party’s case are not defined with a sufficient level of clarity and detail, or where submissions are clearly lacking in any useful information to indicate to the other party, the issues that they would need to respond to.[230] Another consideration is where the adjournment of a hearing, with minimal prior notice, may result in a party incurring additional costs.[231] If amendments are filed, as is the case in the present matter, the nature and implications of these amendments may form a consideration,[232] such an extraordinary amount of additional work may need to be done[233] in the Opponent having to prepare new material.[234]
[230] Simco Mining Products and Services Pty Ltd v CQMS Pty Ltd [2019] APO 5 at [149]-[156]. CRRC Qishuyan Institute Co., Ltd v GE Global Sourcing LLC [2019] APO 7 at [83]-[85].
[231] Melbourne Water Corporation v Green Edge (IPCO) Pty Ltd [2009] APO 26.
[232] Innovia Security Pty Ltd v De La Rue International Limited [2015] APO 55 at [94]-[96]. Merial, Inc v Intervet International B.V. [2018] APO 52 at [152]-[154].
[233] AMERICAN NATIONAL CAN COMPANY v. W.R. GRACE & CO.-CONN. and TRIGON PACKAGING SYSTEMS (NZ) LIMITED [1996] APO 32 referring to Collins v Westralian Sands Ltd (1993) 9 WAR 56 at 67 and Nicholson v Colonial Mutual Insurance Co [1887] VicLawRp 15; (1887) 13 VLR 58 at 65. See also Australian Postal Corporation v David John Holton [2010] APO 22.
[234] Grasslanz Technology Limited v Agriculture Victoria Services Pty Ltd [2018] APO 47.

167. Conversely, as the Applicant had filed amendments during the opposition, it may be seen that the Opponent was partially successful up to this point.[235] Where a party’s conduct is considered, to such an extent that it impacts the efficient conduct of opposition proceedings, that the complexity of the case was increased by the way that the manner was prosecuted,[236] the Commissioner may award actual costs.[237] It is therefore open to me to award costs according to Schedule 8 against the Applicant or alternatively, it is not uncommon for each party to bear its own costs.[238] In the circumstances, it would appear appropriate that I decline to make an award of costs.
[235] See, eg, Dorel Australia Pty Ltd v HBG IP Holding Pty Ltd [2019] APO 9. Cantarella Bros Pty Ltd v Koninklijke Douwe Egberts B.V. [2018] APO 81. Sebel Furniture Ltd v Furnware Limited [2013] APO 19.
[236] SNF (Australia) Pty Ltd v Ciba Specialty Chemicals Water Treatments Limited [2016] APO 22. Fletcher Insulation Pty Ltd v Anton Brandt Buenemann [2015] APO 12.
[237] Arrow Plastics Pty Ltd v NCI Packaging Pty Ltd [2008] APO 12. Amgen, Inc. v Genentech, Inc [2016] APO 15; BASF SE v The Lubrizol Corporation [2019] APO 8 at [78].
[238] Austming Trade Pty Ltd v MindsInSync, Inc. [2013] APO 6. Meiji Dairies Corporation v Fonterra Co-operative Group Limited [2012] APO 129.
Conclusion
168. The Opposition is unsuccessful. None of the grounds have been made out. Furthermore, for the reasons above, I make no award of costs.
Isaac Tan
Delegate of the Commissioner of Patents
Annex