Mitsubishi Materials Corporation v Smith International, Inc - [2017] APO 6

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Mitsubishi Materials Corporation v Smith International, Inc. [2017] APO 6

Patent Application: 2012268807

Title:Diamond enhanced drilling insert with high impact resistance

Patent Applicant:                   Smith International, Inc.
Opponent:  Mitsubishi Materials Corporation
Delegate:  R Subbarayan
Decision Date:  9 February 2017
Hearing Date:  Written submissions completed on 16 November 2016

Catchwords: PATENTS – opposition to grant of patent – opposed under the grounds of novelty, inventive step, clarity, fair basis, full description, utility and manner of manufacture – interpretation of omnibus claim – none of the grounds made out – costs awarded against the opponent

Representation: Patent attorney for the applicant: Griffith Hack
Patent attorney for the opponent: F B Rice

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2012268807

Title:Diamond enhanced drilling insert with high impact resistance

Patent Applicant: Smith International, Inc.
Date of Decision: 9 February 2017
DECISION
The opposition is unsuccessful as none of the grounds have been made out. Costs awarded against the opponent, Mitsubishi Materials Corporation.
Subject to any appeal of this decision, the application will proceed to grant.
REASONS FOR DECISION
BACKGROUND

Patent application 2012268807 was filed on 20 December 2012 in the name of Smith International, Inc (the Applicant). It claims an earlier priority date of 30 December 2011 from basic application US 61/581757. Following examination it was advertised as accepted on 7 May 2015. Grant of the patent has been opposed under section 59 of the Patents Act by Mitsubishi Materials Corporation (the Opponent). The opposition has been heard through written submissions which were completed on 16 November 2016.
GROUNDS OF OPPOSITION
The application has been opposed under the grounds of novelty, inventive step, clarity, fair basis, full description, utility and manner of manufacture.
ONUS OF PROOF
The examination request for this patent application was filed on 20 December 2012. As a consequence, substantive amendments of the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 do not apply to the present application. This includes the amendment to subsection 60 (3A) that allows the Commissioner to refuse a patent application if satisfied on the balance of probabilities that a ground of opposition exists.
Consequently the former standard for opposition proceedings applies and the opponent must establish that it is clear or practically certain that the patent is invalid (F Hoffman La Roche AG v New England Biolabs Inc [2000] FCA 283 at [29], [67]; 50 IPR 305 at 311, 319; Commissioner of Patents v Sherman [2008] FCAFC 182 at [18], [22]; 79 IPR 426; Genetics Institute Inc v Kirin-Amgen Inc [1999] FCA 742; [1999] 92 FCR 106 at [17]).
EVIDENCE
The opponent’s evidence in support comprises a declaration dated 8 February 2016 from Dr Osamu Fukunaga with exhibits OF-1 to OF-14 (Fukunaga).
Dr Fukunaga has a PhD in Engineering and has worked for over 30 years in the field of inorganic materials in institutions such as the Tokyo Institute of Technology and the National Institute of Researches in Inorganic Materials. He retired as Professor Emeritus at the Tokyo Institute of Technology. He has published a number of articles in the field of diamonds and related materials.
The applicant did not file any evidence in answer.
SPECIFICATION
The present invention relates to polycrystalline diamond (PCD) enhanced inserts for use as cutting elements on earth-boring drill bits. The specification states that although such inserts are “extremely hard and wear resistant, a polycrystalline diamond enhanced insert may still fail during normal operation”. Such failure may be in the form of fracture, spalling or chipping caused by external loads during operation or in the form of delamination of the PCD layer from the substrate caused by internal stresses.
The specification then states that one of the approaches used to address these problems is the use of one or more transition layers between the PCD layer and the substrate with the transition layers having thermal and elastic properties lying between those of the PCD layer and the substrate. Although such transition layers have significantly reduced detrimental residual stresses and consequently improved durability of the inserts, failures still happen in the form of wear, fracture and chipping.
The object of the present invention is then stated as follows:
“It is, therefore, desirable that an insert structure be constructed that provides desired PCD properties of hardness and wear resistance with improved properties of fracture toughness and chipping resistance, as compared to conventional PCD materials and insert structures, for use in aggressive cutting and/or drilling applications”.
The Nature of the Invention
The specification states that the present invention improves the performance of multi-layer diamond enhanced inserts by controlling the relative hardness of the one or more transition layers with respect to the PCD layer and/or to the substrate. More specifically the Vickers Hardness (HV) values of the PCD working layer, the transition layer(s) and the substrate are designed to be within certain optimized hardness ranges with the hardness of the transition layer(s) being between that of the PCD layer and of the substrate.
According to the specification the inventors of the present application have found that by “optimizing the mechanical properties of such multi-layered diamond enhanced inserts, particularly the relative hardness of the transition layers with respect to the diamond working layer and/or to the substrate, the transition layer(s) may provide significant support to the working layer and improve the survivability rate of the insert during drilling”.
Embodiments of the Invention
The specification then describes a number of embodiments of inserts with one or more transition layers between the PCD working layer and the substrate in which the hardness of the one or more transition layers is optimized with respect to the hardness of the PCD layer and/or the substrate.
In one embodiment of the invention as shown in Figure 2 that is reproduced below, an insert 200 has a single transition layer 230 between a PCD working layer 210 and a substrate 220. The transition layer 230 has a hardness that is at least 500 HV greater than that of the substrate but does not exceed that of the substrate by more than 1500 HV.
In another embodiment of the invention as shown in Figure 4 that is reproduced below, an insert 400 has a single transition layer 430 between a PCD working layer 410 and a substrate 420. The hardness of the PCD working layer 410 is greater than or equal to 4000 HV and the transition layer 430 has a hardness that is less than that of the PCD layer by at least 1000 HV but by no more than 1500 HV.
The specification states that the embodiment of figure 4 can be modified to include an inner or second transition layer between the transition layer 430 and the substrate 420 and that the hardness of this inner transition layer can be chosen to be between 500-1500 HV greater than that of substrate 420.
Similar to the PCD working layer, the transition layers are also formed from composites of diamond grains, metal binder and metal carbide or carbonitride particles. The hardness of the transition layers can be controlled in various ways such as by altering the relative amounts of diamond, carbide and binder; by altering the grain size of the diamond and/or carbide or by the type of metal carbide or carbonitride.
The PCD layer and the one or more transition layers are formed by a well-known High Pressure and High Temperature (HPHT) process.
The specification ends with 10 claims of which claims 1 and 10 are independent claims. These independent claims read as follows:
1.An insert for a drill bit, comprising:
a substrate;
a working layer of polycrystalline diamond material on the uppermost end of the insert,
wherein the polycrystalline diamond material comprises:
a plurality of interconnected diamond grains;
a binder material;
an outer transition layer between the working layer and the substrate, wherein the outer
transition layer is adjacent to the working layer;
wherein the working layer has a hardness greater than or equal to 4000 HV; and
wherein the outer transition layer has a hardness that is less than the working layer hardness by at least 1000 HV and less than 1500 HV.
10.An insert for a drill bit substantially as herein described with reference to the accompanying figures 1-4 and 6-8.
NOVELTY
A claimed invention is deprived of novelty if it has been given to the public before the priority date, either by prior use of a product or process, or by publication of information that equates to the claimed invention (Novozymes A/S v Danisco A/S [2013] FCAFC 6; 99 IPR 417 at [147]). It is well settled that the general test for anticipation or want of novelty is the reverse infringement test (Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19; 137 CLR 228 at [19]), and this test is satisfied if the alleged anticipation discloses all of the essential features of the invention as claimed (Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40; 16 IPR 545 at [19]).
To meet this requirement, the prior art must contain “clear and unmistakable directions” to produce the invention as claimed (Pfizer Overseas Pharmaceuticals v Eli Lilley and Company [2005] FCAFC 224; 68 IPR 1 at [314]). However, if the prior publication contains a direction which is capable of being carried out in a manner which would infringe the claimed invention, but would at least as likely be carried out in such a way that would not do so, the invention as claimed will not be anticipated (General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [1972] RPC 457 at 485-486; 1A IPR 121 at 138, Novozymes A/S v Danisco A/S [2013] FCAFC 6; 99 IPR 417 at [177]).
In AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99, the full Federal Court held:
"Sufficiency of disclosure is a cardinal anterior requirement in the analysis of whether a prior art document anticipates a claimed invention. It is only after the stage of assessing the sufficiency of disclosure which involves a determination about whether a prior document has ‘planted the flag’ as opposed to having provided merely ‘a signpost, however clear, upon the road’ or, perhaps, something less that the notion of reverse infringement comes into play as the final and resolving step of the required analysis. It is not the first step of the required analysis; nor is it the only step".
In relation to the specificity required in order for a prior art document to anticipate the claimed invention, the full court in AstraZeneca (supra) also quoted with approval the following quote from Gyles J in Apotex Pty Ltd and Another v Sanofi-Aventis and Another [2008] FCA 1194; (2008) 78 IPR 485:
"anticipation is deadly but requires the accuracy of a sniper, not the firing of a 12 gauge shotgun".
The opponent relied on the following two documents in support of their contention that the claimed invention is not novel.
D12: US 2011/0031033 (Mourik et al.) published 10 February 2011
The opponent submitted that claim 1 is anticipated by D12 and they relied in particular on Example 7 in D12.
D12 is titled “Highly Wear Resistant Diamond Insert With Improved Transition Structure” and is assigned to the applicant of the present application. The object of the invention of D12 is stated in identical terms to the object of the present invention. However the solution proposed in D12 is to provide at least one transition layer between the PCD outer layer and the substrate, the at least one transition layer comprising a composite of diamond grains, metal carbide particles, and a binder material, wherein the diamond grains have a larger grain size than the diamond grains of the PCD layer.
D12 states that the increase in diamond grain size may produce an even tougher transition layer (as compared to a transition layer having the same diamond grain size) due to the difference in distribution of the metallic phase interdispersed in the diamond structure. It states that there is a proportional relationship between grain size and toughness and an inverse relationship between grain size and strength. Fine grain size PCD generally has high strength and low toughness, while coarse grain PCD generally has high toughness and low strength. A coarser diamond grain structure may reduce the diamond surface area and increase the size of the binder pockets, providing for improved toughness and impact resistance.
The PCD layer and the one or more transition layers are formed by a well-known HPHT process.
D12 also describes a number of examples to demonstrate “the variations that may exist in the insert layer structure in accordance with the teachings of the present disclosure”. One of these examples is Example 7 which reads as follows:
The opponent submitted that although there is no disclosure of the hardness of the different layers of an insert prepared according to Example 7, the hardness of the PCD working layer and the outer transition layer of such an insert would fall within the limits specified in claim 1. In support of this submission, they relied on experimental data provided by Dr Fukunaga. I will now discuss Dr Fukunaga’s evidence and in particular his experiments based on the teachings of Example 7.
Dr Fukunaga prepared two samples based on the disclosure of D12 and Example 7 in particular, with the outer PCD working layer and the transition layers having diamond-WC-CO compositions that fall within the ranges specified in Example 7. The actual composition is given in Table 1(a) of his evidence that is reproduced below:
Both samples were prepared under conditions specified in paragraph [0051] of D12. The hardness of the different layers was subsequently measured using standard test methods for measuring Vickers Hardness of materials. The results of the hardness measurements are presented in Table 2 that is reproduced below:
It is clear from these experimental results that Sample 1 has a working layer hardness (4370 HV) that is greater than 4000 HV and that the outer transition layer has a hardness (3130 HV) that is less than the working layer hardness by at least 1000 HV and by less than 1500 HV. Sample 2 also has a working layer hardness (4588 HV) that is greater than 4000 HV but the outer transition layer has a hardness (2141 HV) that is less than the working layer hardness by more than 1500 HV.
Sample 1 therefore falls within the scope of claim 1 whereas Sample 2 does not. This much is common ground. Where the parties differ is whether the hardness results of Sample 1 constitute an inherent teaching in D12 that anticipates the invention of claim 1. The applicant submitted that the fact that Sample 2 also produced according to the teachings of Example 7 does not have the hardness ranges specified in claim 1 establishes that following the teachings of Example 7 does not inevitably lead to the claimed invention, whereas the opponent submitted that as Sample 1 fell within the scope of claim 1, the claimed invention has been given to the public and is therefore not novel.
In relation to anticipation by inherency and inevitable result, the Australian Courts have followed the principles established in General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd[1972] RPC 457 where it was stated:
If the prior inventor's publication contains a clear description of, or clear instructions to do or make, something that would infringe the patentee's claim if carried out after the grant of the patentee's patent, the patentee's claim will have been shown to lack the necessary novelty, that is to say, it will have been anticipated. The prior inventor, however, and the patentee may have approached the same device from different starting points and may for this reason, or it may be for other reasons, have so described their devices that it cannot be immediately discerned from a reading of the language which they have respectively used that they have discovered in truth the same device; but if carrying out the directions contained in the prior inventor's publication will inevitably result in something being made or done which, if the patentee's patent were valid, would constitute an infringement of the patentee's claim, this circumstance demonstrates that the patentee's claim has in fact been anticipated.
If, on the other hand, the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee's claim, but would be at least as likely to be carried out in a way which would not do so, the patentee's claim will not have been anticipated, although it may fail on the ground of obviousness. To anticipate the patentee's claim the prior publication must contain clear and unmistakeable directions to do what the patentee claims to have invented: Flour Oxidizing Co. Ltd. v. Carr & Co. Ltd. ((1908) 25 R.P.C. 428 at 457, line 34, approved in B.T.H. Co. Ltd. v. Metropolitan Vickers Electrical Co. Ltd. (1928) 45 R.P.C. I at 24, line I). 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.
More recently the Full Federal Court in Novozymes A/S v Danisco A/S [2013] FCAFC 6 stated that a prior disclosure will only invalidate a claim if by carrying out the instructions therein, the skilled addressee would, rather than could, have arrived at the claimed invention.
Although General Tire is part of Australian jurisprudence in the relevant area, it must be accommodated to the terms of s 7(1) of the Patents Act, upon which everything depends. That is to say, the inevitability of outcome to which General Tire refers must be such as would arise from recourse to the information referred to in the section. At the expense of repetition, it is here useful to remind ourselves of what the Court of Appeal said in that case ([1972] RPC at 485-486):
… if carrying out the directions contained in the prior inventor's publication will inevitably result in something being made or done which, if the patentee's patent were valid, would constitute an infringement of the patentee's claim, this circumstance demonstrates that the patentee's claim has in fact been anticipated. [Emphasis added]
This proposition is explicitly hypothetical. It is concerned not with what has happened or with what could have happened, but with what would have happened if the directions were carried out. As such, the proposition is in complete harmony with s 7(1), and with every other presently relevant aspect of the jurisprudence in this area. It is not the doing of it, nor even the ability to do it, that amounts to anticipation: it is the content of the information. If the information contains directions which, if carried out, would constitute an infringement of the patent in suit, the invention under the latter is not novel.
In the present case, although Dr Fukunaga made two samples based on the teachings of Example 7, only Sample 1 possesses hardness values that falls within the scope of claim 1 with the hardness values of Sample 2 falling outside the scope of claim 1. Therefore while the teaching of Example 7 of D6 contains a direction which is capable of being carried out in a manner which would infringe the patentee's claim, it would also be at least as likely to be carried out in a manner which would not infringe the patentee’s claim. It is furthermore clear that given the fairly broad ranges for the grain size, binder volume and tungsten carbide volume, various other compositions are possible for the PCD working layer and the outer transition layer. No hardness values are available for such other possible compositions and it is entirely possible that at least some of them would fall outside the scope of claim 1 similar to Sample 2.

While the opponent has submitted that there is no requirement that all possible compositions should fall within the scope of claim 1, I beg to disagree. The authorities that I have mentioned clearly require that carrying out the directions of the prior art would inevitably result in the claimed invention. Clearly that is not the case here. Claim 1 is not anticipated by D12.
D6: US 2011/0031032 (Mourik et al.) published 10 February 2011
D6 is titled “Diamond Transition Layer Construction with Improved Thickness Ratio” and is assigned to the applicant of the present application. Similarly to the present invention it is directed to a PCD enhanced drilling insert having a substrate, a PCD working layer and one or more transition layers. The object of the invention of D6 is stated in identical terms to the object of the present invention. However the solution proposed in D6 is to provide at least two transition layers between the PCD outer layer and the substrate, the at least two transition layers comprising a composite of diamond grains, metal carbide particles, and a binder material, wherein the thickness of the PCD working layer is less than that of each of the at least two transition layers.
The PCD layer and the one or more transition layers are formed by a well-known HPHT process.
D6 also describes 4 Examples to demonstrate “the variations that may exist in the insert layer structure in accordance with the teachings of the present disclosure”. Examples 3 and 4 are as follows:
While these examples specify a broad range of hardness values for each of the outer PCD layer and the outer transition layer that could encompass the specific hardness value ranges of claim 1, there is no clear teaching of these specific ranges or their importance in overcoming the stated problem. The emphasis in the disclosure of D6 is clearly on the thickness of the PCD layer and the transition layers.
The opponent submitted that despite this shortcoming in the teachings of D6, it still anticipates claim 1 based on the evidence of Dr Fukunaga. Dr Fukunaga’s evidence in relation to D6 and his reasoning can be summarized as follows:
·Dr Fukunaga consulted 11 different references (10 non-patent literatures and 1 patent document) each of which relates to either diamond composites or tungsten carbide composites. He has extracted the hardness values of different diamond and tungsten composites from these references (Table 3 of Fukunaga) and then plotted a diamond volume versus hardness chart (Figure 2 of Fukunaga) that is reproduced below:
·From this chart Dr Fukunaga has inferred that hardness of the composite is a function of diamond volume in the composite and that “various hardness values can be designed by the control of the diamond content in the composite layers” and conversely also that “diamond content for the layers can be designed based on the hardness data”.
·Dr Fukunaga has then used this relationship between diamond content and hardness values to estimate the hardness of the different layers in the Examples of D6 which he has presented in the form of Tables 4 (a) and (b) that are reproduced below:
·The estimated hardness values for Examples 3 and 4 in these Tables falls within the ranges of claim 1 and therefore claim 1 is not novel.
The applicant submitted that the methodology used by Dr Fukunaga to establish that D6 discloses hardness ranges that fall within the scope of claim 1 is fundamentally flawed for the following reasons:
·D1 to D11 are not appropriately crossed-referenced to be treated as a single source of information.
·It is impermissible for novelty to be assessed against Figure 2 as concluded by Dr Fukunaga in paragraph 34, as this information has not been derived from a single source of information (or 2 or more documents that would be treated as a single source of information) at the priority date of the present invention.
·Even if Figure 2 of the Fukunaga Declaration was used to determine the hardness values of Examples 1 to 4 of D6, it would not disclose the claimed HV values.
·The data of figure 2 does not establish that higher volume % of diamond positively correlates with higher HV values.
·Each of the compositions in Figure 2 do not have the same amounts of WC% and CO, and were produced under different conditions (sintering pressure and temperature) and hence Figure 2 cannot be relied upon to establish a relationship between volume % of diamond and hardness HV value, particularly when so many variables were not taken into consideration when plotting the graph.
·The estimates of hardness ranges that the opponent has sought to derive from figure 2 are not accurate as certain references have been excluded without explanation. When these are included, the estimated values are significantly different as shown in revised Tables 4 (a) and (b) that they have prepared.
It is well established that a prior art document should be construed "not as a matter of abstract uninformed construction", but by making "a common-sense assessment" of what it would convey to the skilled reader in the context of the then-existing published knowledge (Populin v HB Nominees Pty Ltd(1982) 41 ALR 471). Also it is legitimate to read a prior art document in the light of common general knowledge.
"a given specification is not to be read in a vacuum. The reader must be regarded as having at least the common knowledge of the art." Acme Bedstead v Newlands(1937) 58 CLR 689 at page 704.
The Full Court in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70 at 181 said (citing Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40):
“If the prior art discloses some but not all integers of a claimed patent to a product, such as a combination, there is anticipation if the skilled addressee would add the missing information as a matter of course and without the application of inventive ingenuity or undue experimentation.”
It is clear that the examples of D6 do not disclose the specific ranges of hardness for the working layer and the outer transition layer of claim 1. The question is therefore whether these specific ranges are inherently disclosed to a skilled addressee when read in light of the common general knowledge.
While Dr Fukunaga has considerable qualifications and experience in the field of diamond composites and is therefore qualified to provide opinion on the common general knowledge in this field, his evidence is totally silent on the common general knowledge. Instead he has sought to rely on 11 different pieces of prior art, extracted diamond concentration and hardness values from certain examples in these prior art and plotted them in a table/chart to establish that there is a direction relationship between diamond content of the composite and its hardness. Based on this relationship he has then tried to estimate more specific ranges of hardness for the examples in D6 that fall within the scope of claim 1.
I fail to see any basis for this kind of methodology to construe the disclosure of D6. No information is given as to why these 11 prior art documents were chosen. None of these are alleged to be common general knowledge in the art and most of them are not cross-referenced or related to one another in any way. Also as noted by the applicant the compositions of the composites and the conditions under which they were produced are clearly not the same in each of the prior art. While D6 does mention hardness values for the different layers, the focus of D6 is to relate the thickness of the PCD layer to those of the transition layers rather than the hardness. It appears that that Dr Fukunaga has engaged in ex-post facto analysis to somehow try and fit the disclosure of D6 to the claimed invention. Such an approach is totally inappropriate in light of the authorities.
Without evidence as to the common general knowledge in the art and why based on that common general knowledge a skilled addressee would have interpreted the examples of D6 as inherently teaching the hardness ranges of claim 1, I cannot be satisfied that D6 anticipates the claimed invention.
INVENTIVE STEP
The opponent’s submissions in relation to this ground merely states that “where any variation between the diamond enhanced composites of D12 or D6 and the inserts claimed in claims 1 to 10 of the Application is found, it is submitted that these variations relate to either matters of design choice or are merely workshop variations which a person skilled in the art would have come to as a matter of routine”.
The statutory basis for inventive step is set out at s7(2) and s7(3) of the Act, and is reproduced below:
“(2) For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).
(3) The information for the purposes of subsection (2) is:
(a) any single piece of prior art information; or
(b) a combination of any 2 or more pieces of prior art information;
being information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded as relevant and, in the case of information mentioned in paragraph (b), combined as mentioned in that paragraph.”
Although not expressly referred to in the Act, it has been accepted by the authorities that lack of inventive step in the Act is commensurate with the previous concept of obviousness under the Patents Act 1952 (Cth) (albeit relying on a different prior art base); see Re James EarlWinner and Donna C Winner v Ammar Holdings Pty. Limited [1992] FCA 377 at [12]; (1992) 24 IPR 137 at 140. The question of obviousness has been extensively considered by the courts. In particular Aickin J. stated in Wellcome Foundation Ltd. v VR Laboratories (Aust) Pty. Ltd. [1981] HCA 12 at [45]; (1981) 148 CLR 262 at 286:
“The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.”
I have already found that claim 1 is not anticipated by either D12 or D6. Dr Fukunaga has not provided evidence as to the common general knowledge in the art and why the skilled addressee would have as a matter of routine arrived at the claimed invention by combining this common general knowledge with the teachings of D12 or D6. In the circumstances, I cannot be satisfied that the claimed invention lacks an inventive step.
This ground of the opposition has not been made out.
CLARITY
The opponent submitted that the claims are unclear and indeterminate with respect to Vickers Hardness as “the claim and the specification are wholly silent on the appropriate conditions under which the parameter of Vickers hardness should be measured” and that the “value obtained from a Vickers hardness measurement will vary depending on the measurement conditions, for example, the load, used in the Vickers hardness measurement”.
While it is true, that the specification does not state what was the load used in measuring the Vickers Hardness, it is well known that the value of Vickers Hardness is independent of the load used in the hardness measurement. In other words even if the hardness measurement is carried out using different loads, the hardness value obtained would be the same. Also I agree with the applicant when they submit “means and parameters for measuring hardness are well known in the art before the priority date”.
I further note that Dr Fukunaga has expressed no difficulty in understanding the specified hardness values in the specification in the absence of the measurement conditions. He carried out the hardness value measurements of the samples that he produced under a load of 0.5 kg and 15 seconds and used this to compare it with the claimed hardness values.
In my view, the lack of conditions under which the Vickers Hardness is measured does not make the claims unclear or indeterminate.
SUFFICIENCY
The opponent submitted that the specification does not fully describe the invention for the following reasons:
Vickers Hardness
The reasons given by the opponent for Vickers Hardness are basically the same as those given for lack of clarity. I have already found that the values of Vickers Hardness specified in the specification are not unclear or indeterminate. Dr Fukunaga does not state that he could not perform the invention without further invention. It follows that the specification is fully described in relation to this feature.
Grain size and diamond volume
The opponent has also submitted that “the specification does not sufficiently disclose other matters such as the method for obtaining the average grain size and the method for measuring the diamond volume in the PCD which are required in order to perform the invention”. More specifically they submitted that there is no disclosure as to how the average grain size values of the diamond grains were determined and also as to how the diamond volume in the PCD was determined.
The lack of such methods does not necessarily lead to the conclusion that the invention has not been fully described. The question is whether the invention can be performed by the skilled addressee without further invention or prolonged study of matters presenting initial difficulty. There is no expert evidence to suggest that skilled addressee would not know what methods to use to measure the grain sizes and the diamond volume in the PCD. Dr Fukunaga who is well qualified in this field, does not state that further experiments would be required to determine these parameters. Furthermore it is quite clear from paragraph [0035] of the specification that the reference to diamond content refers to the diamond content in the formed PCD material.
The specification is fully described in relation to the features of grain size and diamond volume.
Omnibus claim 10
The opponent submitted that “Omnibus claim 10 includes, among other things, an insert for a drill bit substantially as herein described with reference to accompanying Figure 6. The example shown in Figure 6 is discussed in paragraph [0052]. However, there is insufficient information provided in the specification for the skilled addressee to prepare the insert shown in Figure 6”. More specifically they argued that paragraph [0052] only states that the “hardness difference between the working layer 610 and the adjacent transition layer 630 is less than 1500 HV” without any mention of the hardness of the working layer and it is therefore “unclear whether the outer layer of the insert has a hardness of 4000 HV (as in claim 1) or whether it is an insert according to the embodiments described in paragraph [0047] or the embodiments disclosed in paragraph [0049] which have working layers with a hardness of less than 4000 HV”.
The applicant submitted that the law as provided by the full Federal Court in GlaxoSmithKline Australia Pty Ltd v Reckitt Benckiser Healthcare (UK) Ltd [2016] FCAFC 90 requires that omnibus claim 10 which characterizes a drill bit as "An insert for a drill bit substantially as herein described with reference to the accompanying figures ...” must be interpreted as having the essential features of the invention as recited in claim 1 of the accepted application and that on this basis, the opponent's submission are moot.
In GlaxoSmithKline Australia (supra) the Full Court considered an omnibus claim 9 that defined a liquid dispensing apparatus “substantially as described with reference to the drawings and/or examples”. In my view, the following principles can be derived from the Full Court’s decision in relation to the interpretation of omnibus claims:
·Greater attention should be generally placed on the body of the specification to provide the necessary definition of the invention.
·Where the omnibus claims draws attention to the “drawings and/or examples”, these stand as the reference point for the scope of the claim, which is then to be read with the description of the invention given in the body of the specification.
·The use of the word “substantially” in an expression like “substantially as described with reference to the drawings and/or examples” does not extend the definition of the invention to “the substantial idea” disclosed by the specification and shown in the drawings and does not provide a warrant for “departing from what the specification itself mandates to be the essential features of the invention”.
Applying these principles to the present case, it is clear that the description of figures 1-4, 6-8 referred to in omnibus claim 10 must be construed in light of the description of the invention in the body of the specification. The opponent has specifically focussed on the embodiment of figure 6 which as they pointed out is described in paragraph [0052]. In this embodiment the hardness difference between the hardness of the working layer and the hardness of the adjacent transition layer is stated to be less than 1500 HV. As mentioned above, this paragraph should be read together with the description of the invention given in the body of the specification rather than being read in isolation. It is clear when the specification is read as a whole, that this invention is that which is given in the consistory clause in paragraph [0013] and finds expression in claim 1.
There is a clear reference in this statement of the invention for the working layer to have a hardness value greater than or equal to 4000 HV. In my view, the embodiment of figure 6 requires this limitation. Omnibus claim in its reference to the embodiment of figure 6 is clear and fully described.
FAIR BASIS
Under Section 40(3), fair basis is “concerned purely with the relationship between the body and claims of the one specification.” (Lockwood Security v Doric Products [2004] HCA 58; 217 CLR 274; 212 ALR 1; 79 ALJR 260). As was noted in Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8; 207 CLR 1; 177 ALR 460; 75 ALJR 518 “a comparison between the matter described in the specification and the claim which defines the scope of the monopoly”, following the reasoning of Barwick CJ in Olin Corporation v Super Cartridge Co Pty Ltd [1977] HCA 23; (1994) 180 CLR 236 when he said:
“The question whether the claim is fairly based is not to be resolved ... by considering whether a monopoly in the product would be an undue reward for the disclosure. Rather, the question is a narrow one, namely whether the claim to the product being new, useful, and inventive, that is to say, the claim as expressed, travels beyond the matter disclosed in the specification.”
As was noted in Lockwood (supra):
“the statutory test as expounded by Barwick CJ does not call for any evaluation of whether the breadth of the claims exceeds "the technical contribution to the art embodied in the invention", merely for an evaluation of whether the claims travel beyond the matter described in the specification”
The opponent submitted that the claims lack fair basis on a number of accounts.
Firstly they submitted that as specification indicates that the invention disclosed in the application provides desired PCD properties of hardness and wear resistance with improved properties of fracture toughness and chipping resistance, as compared to conventional PCD materials and insert structures for use in aggressive cutting and/or drilling applications. However, as the claims define inserts which are anticipated by the prior art and, therefore, the invention defined in the claims does not provide any improvement compared to conventional PCD materials and insert structures for use in aggressive cutting and/or drilling applications.

This line of attack on fair basis is purely based on the lack of contribution to the art rather than any evaluation of whether the claims travel beyond the matter described. It consequently fails. In any event, I have found that the claims are novel and hence the premise upon which lack of fair basis is said to arise is false.
Secondly the opponent submitted that the claims are not consistent with the disclosure of the invention in the specification because there is no disclosure of “an upper limit of the hardness of the outer transition layer (being less than by “at least 1000 HV”) when “the working layer has a hardness greater than or equal to 4000 HV” as recited in the lines 13 and 14 of claim 1”.
The submissions from both parties in this regard make reference to the specification as filed to establish their respective cases on fair basis. I fail to understand the relevance of such references to the specification as filed. Fair basis is to do with internal consistency within the one specification and in this case that specification is the specification as accepted. While the comparison with the specification as filed may have been a relevant consideration in relation to allowability of amendments and/or fair basis of claim 1 during initial examination, once the amendments have been allowed and the application accepted, any assessment of the fair basis of the claims as accepted is to be done only on the specification as accepted and not with the specification as filed.
Fortunately as the description of the accepted specification is substantially the same as the description of the specification as filed except for the consistory clauses, the submissions from the parties are still relevant even in respect of the accepted specification.
Claim 1 of the application as accepted mirrors consistory clause [0013] under the heading “Summary of Invention”. However this consistory clause alone cannot provide fair basis for the claim if the rest of the specification indicates that this is something to the contrary. As noted by the Full Court in Kimberly-Clark Australia Pty Ltd v Multigate Medical Products Pty Ltd (2011) 92 IPR 21:
“Patent specifications often include a general description or summary of the invention which may include a consistory clause. A consistory clause is in the nature of a general description of an invention which is often expressed in terms which mirror the broadest of the claims: Welch Perrin & Co Pty Ltd v Worrell (1961) 106 CLR 588 at 612. Such clauses are not compulsory but are routinely included by those responsible for drafting patent specifications often with a view to providing fair basis for the broadest claim. Whether or not a consistory clause does so will depend upon whether there are other matters disclosed in the body of the specification which show that the invention is narrower than that described in the consistory clause: Lockwood Security Products Pty Ltd v Doric Products Ltd (2004) 217 CLR 274; 212 ALR 1; 62 IPR 461; [2004] HCA 58 at [99]”.
The applicant referred to the disclosure of paragraph [0048] as providing the fair basis for the upper limit of 1000 HV for the outer transition layer. Paragraph [0048] reads as follows:
“According to embodiments of the present disclosure, an outer transition layer may be engineered to have a hardness value based on the hardness of an adjacent PCD working layer. For example, referring to FIG. 4, an insert may have a PCD working layer 410, a substrate 420, and an outer transition layer 430 between the working layer 410 and the substrate 420, wherein the outer transition layer 430 is adjacent to the working layer 410. The PCD working layer 410 may have a hardness equal to or greater than 4, 000 HV (and up to 4500 or 5000 HV), and the outer transition layer 430 may have a hardness that is substantially lower (by at least about 300HV) than the hardness of the PCD working layer 430. According to embodiments of the present disclosure, an outer transition layer may be designed to have a hardness that is less than the working layer hardness by less than 1500 HV. In some preferred embodiments, the difference between the working layer hardness and the outer transition layer hardness may be designed to be less than 1200 HV. Further, the outer transition layer may be designed to have a hardness that is also between 500 HV and 1500 HV greater than the hardness of the adjacent substrate”.
Clearly this paragraph discloses a working layer hardness greater than 4000 HV and an outer transition layer hardness that is at least 300 HV lower than that of the working layer but is no more than 1500 HV lower. What it fails to specifically disclose is that the upper limit of hardness for the transition layer is at least 1000 HV lower than that of the working layer. However this upper limit is clearly within the range specified in this paragraph. The applicant has chosen to claim a smaller range within that disclosed in this preferred embodiment.
Therefore in my view, the consistory clause and paragraph [0048] provide a real and reasonably clear disclosure of the feature of the upper limit of 1000 HV for the hardness of the outer transition layer. Claim 1 does not travel beyond the matter disclosed in the specification and is fairly based.
The opponent also submitted that “Similarly claims 2, 4, 6, 7 and 9 are also not fairly based on the original specification. Specifically, the features of the difference between the working layer hardness and the outer transition layer hardness (“less than 1200 HV”) in the last line of claim 2, the hardness of the substrate (“less than 1600 HV”) in the last line of claim 4, the difference between the second transition layer hardness and the hardness of the substrate (“between 750 HV and 1500 HV”) in the third line of claim 6, and the difference between the outer transition layer hardness and the hardness of the substrate (“between 750 HV and 1500 HV”) in the second line of claim 9 are not fairly based on the specification”.
Here again submissions from both parties were not very helpful as they rely on the disclosure of the specification as filed rather than the accepted specification. Despite that it is my view that the body of the specification as a whole and more particularly the disclosure in paragraphs [0044], [0047] and [0048] provides a real and reasonably clear disclosure of these ranges.
For example paragraph [0048] discloses that the feature of “less than 1200 HV”, paragraph [0047] discloses the feature of “less than 1600 HV”, paragraph [0044] discloses the feature of “between 750 HV and 1500 HV”. Furthermore the feature “between 750 HV and 1500 HV” of claim 9 falls within the range of between 500 HV and 1500 HV disclosed in Paragraph [0048].
Claims 2, 4, 6, 7 and 9 are also therefore fairly based.
UTILITY
The opponent submitted that claims lacks utility because “the insert according to the claims is known from the prior art and provides no improvement compared to convention PCD materials and insert structures” and consequently does not achieve the promise of improved fracture toughness and chipping resistance.
In Ranbaxy Australia Pty Ltd (ACN 110 781 826) v Warner-Lambert Company LLC [2008] FCAFC 82, the Full Court stated:
Under ss 138 and 18(1)(c) of the 1990 Act, it is a ground of invalidity if the claimed invention is not useful "so far as claimed in any claim". If the claimed invention does what it is intended by the patentee to do and the end obtained is itself useful, the invention is useful within the meaning of s 18(1)(c) (see Rehm Pty Limited v Webster’s Security Systems (International) Pty Limited (1981) 81 ALR 79 at 96; Welcome Real-Time SA v Catuity Inc [2001] FCA 445; (2001) 113 FCR 110 at 144; and Fawcett v Homan (1896) 13 RPC 398 at 405). As to the first aspect, the invention as claimed must attain the result promised by the patentee (Advanced Building Systems Pty Limited v Ramset Fasteners (Aust) Pty Limited [1998] HCA 19; (1998) 194 CLR 171 at 187).
It is also clear from the authorities that the test for utility does not call for an evaluation of the performance of the invention compared to other prior art devices.
"If an invention does what it is intended by the Patentee to do, and the end attained is itself useful, the invention is a useful invention. A patent for such an invention cannot be held bad for want of utility by comparing it with other known methods or things which may be preferred to it." (Fawcett v Homan (1896) 13 RPC 398 at 405).
I have already found that the claimed invention is novel and inventive over the prior art. There is no further evidence to establish that the claimed invention does not do what it is intended to do and that it does not lead to improved fracture toughness and chipping resistance. I have therefore no basis to find that the claimed invention lacks utility. This ground of the opposition fails.
MANNER OF MANUFACTURE
The opponent submitted that as the claimed invention is not novel and inventive over the prior art, the invention is merely a known insert for use in a known manner and therefore it is not a manner of manufacture.
I have found that the claimed invention is novel and inventive. Furthermore there is no evidence to suggest that the invention is not an artificially created state of affairs in the field of economic endeavour.
The claimed invention is a manner of manufacture and this ground of opposition also fails.
CONCLUSION
The opposition is unsuccessful as none of the grounds have been made out.
Subject to any appeal of this decision, I direct that the application proceed to grant.
COSTS
Costs normally follow the event and I see no reason to depart from this approach in the present case.
The opposition is unsuccessful. I therefore award costs according to Schedule 8 against the opponent, Mitsubishi Materials Corporation.
R Subbarayan
Delegate of the Commissioner of Patents