Peerless Chain Company v Function Chains Pty Ltd
[2015] APO 52
•19 August 2015
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Peerless Chain Company v Function Chains Pty Ltd [2015] APO 52
Patent Application: 2009200745
Title:Flail Chain for Use in Debarking Trees
Patent Applicant: Function Chains Pty Ltd
Opponent: Peerless Chain Company
Delegate: R Subbarayan
Decision Date: 19 August 2015
Hearing Date: 2 June 2015 in Perth
Catchwords: PATENTS – section 59 - opposition to grant of patent – flail chain for debarking trees – shape of chain link - whether claims are novel – whether claims are inventive – whether claims are clear – whether claims are fairly based – whether claims are useful – none of the grounds made out – costs awarded
Representation: Patent applicant: Richard Baddeley of Watermark Patent and Trade Marks Attorneys
Opponent:FB Rice
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2009200745
Title:Flail Chain for Use in Debarking Trees
Patent Applicant: Function Chains Pty Ltd
Date of Decision: 19 August 2015
DECISION
None of the grounds of the opposition have been made out. The claimed invention is novel, inventive, useful, clear and fairly based. I direct that the application proceed to grant subject to any appeal. I award costs according to schedule 8 against the opponent, Peerless Chain Company.
REASONS FOR DECISION
BACKGROUND
Application 2009200745 in the name of Function Chains Pty Ltd (“the applicant”) was filed on 25 February 2009. It does not claim any earlier priority. It was advertised as accepted on 21 March 2013. Peerless Chain Company (“the opponent”) filed a notice of opposition to the grant of the patent under section 59 of the Patents Act on 21 June 2013. This was followed by the Statement of Grounds and Particulars (SOGAP) that was filed on 24 September 2013. The matter was heard in Perth on 2 June 2015. The opponent advised that they would not appear at the hearing and that they rely on the submissions as set out in their SOGAP.
GROUNDS OF OPPOSITION
The SOGAP lists the grounds of opposition as Novelty, Inventive Step, Utility, Clarity and Fair Basis. The particulars for each ground also include submissions in relation to each of the grounds and I have relied on these as the submissions for the hearing.
EVIDENCE
The opponent’s evidence in support comprises copies of the prior art documents that they rely on. No expert evidence was filed.
The applicant’s evidence in answer comprises the following:
- Declaration of Jinhuan Huangfu dated 7 April 2014 with exhibits JH-1 and JH-2. Mr Huangfu is one of the named inventors of the opposed application.
- Copy of a declaration of John Wallingford dated 17 June 2013 with exhibits JW-1 to
JW-6 made in relation to an opposition to patent application 2006244311.
DTQ-1 to DTQ-10 made in relation to an opposition to patent application 2006244311.- Copy of a declaration of David Thomas Quill dated 4 November 2013 with exhibits
SPECIFICATION
The specification states that the invention relates to a flail chain for use in debarking trees. Debarking is the process of removing the bark from felled tress before the trees are sent to a wood chipper. This debarking is done using a debarking or flail apparatus which comprises a number of flail chains attached to a rotatable drum. One end of each chain extends through a respective aperture in the drum and is fixed to a rod within the drum. Each flail chain typically consists of a plurality of substantially oblong shaped linkage elements that are linked together. In use when the drum is rotated, the flail chains strike the tree trunk and remove the bark and any small limbs that may still be attached to the trunk. Naturally the chain linkage elements will be subject to wear during the debarking process. The specification states that “Significant wear occurs on internal surfaces of the linkage elements, particularly in opposing end regions where adjacent chain linkage elements engage with one another” and as a result, the flail chains must be regularly replaced. Replacement of the chains “results in high capital expenditure and, by necessity, lost productivity in down time”.
The present invention is stated to address some of these disadvantages. The solution proposed by the claimed invention is to change the shape of at least one chain linkage element from the typical oblong shape to one having more than three straight portions that are connected by more than three angled portions so that the linkage element defines an interior space that permits the linkage element to rotate with respect to its adjacent link element or elements. This ability to rotate with respect to adjacent linkage elements will ensure that each of the more than three angled portions will engage with adjacent linkage elements during use, thereby substantially distributing the wear across all of the more than three angled portions as opposed to just two angled portions with oblong shaped linkage elements. This will extend the useable life of the chain before it needs to be replaced. In a preferred form the linkage element has a square shape with four shank portions 13 and four angled portions 15 as seen in figure 1a that is reproduced below:
At any one time, only two of the angled portions 15 are in engagement with adjacent linkage elements while the other two angled portions remain unengaged. These unengaged angled portions will protrude outwardly from the flail chain and will during use strike the tree trunk and improve the debarking efficiency when compared to flail chains with only elongated linkage elements in which only the straight sides of the elongated intermediate links will strike the tree trunk.
The specification ends with 16 claims of which independent claims 1 and 14 are reproduced below.
- A flail chain for debarking trees, the flail chain including a plurality of sequentially linked linkage elements, wherein the plurality of sequentially linked linkage elements includes at least one linkage element including more than three shank portions and more than three angled portions connecting said shank portions, wherein said shank portions and said angled portions define an interior space of the linkage element, and wherein the interior space facilitates rotation of the at least one linkage element with respect to its adjacent linkage element.
- A flailing apparatus for debarking trees, the flailing apparatus including:
a rotatable drum having a plurality of apertures;
at least one rod extending longitudinally through the drum and being positioned radially inwardly of the apertures; and
a plurality of flail chains according to any one of claims 1 to 13, each flail chain having a first end fixed to the at least one rod and extending outwardly through a respective aperture.ONUS OF PROOF
The examination request for this patent application was filed on 25 February 2011. 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]; [2000] FCA 283 ; 50 IPR 305 at 311, 319; Commissioner of Patents v Sherman [2008] FCAFC 182 at [18] , [22]; [2008] FCAFC 182 ; 79 IPR 426 ; Genetics Institute Inc v Kirin-Amgen Inc [1999] FCA 742 ; [1999] 92 FCR 106 at [17] ).
CLAIM CONSTRUCTION AND CLARITY
The correct approach to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70, 81 IPR 228 at [118] – [120]:
"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 ... while the claims define the monopoly claimed in the words of the patentee's choosing, the specification should be read as a whole ... it is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification ... terms in the claim which are unclear may be defined or clarified by reference to the body of the specification".
I think it is important to construe the following terms in the claims so as to get a clear understanding of the scope of the claims before I decide on the grounds of novelty and inventive step.
Shank
The Oxford Dictionary defines shank as “the stem or straight part of anything” and I note that the shank portions 13 as shown in the drawings are straight. Therefore I construe the term “shank” to refer to straight portions of the linkage element.
Angled portions
The opponent submitted “The term "angled portions" is indeterminate and unclear. Is the term to be understood as meaning the figure formed by two straight shank portions diverging from a common point, or is it to be understood as meaning substantially angled, and including a somewhat arched figure?”
The applicant argued that the skilled addressee would understand what is meant by this term upon reading the description in combination with the drawings.
The authorities including the one that I have referred to earlier have made it clear that terms in the claim which are unclear may be defined or clarified by reference to the body of the specification. When reference is had to the body of the specification including the drawings, it becomes quite clear that the angled portions 15 refer to angled corner portions that interconnect adjacent shank portions. Each of these angled corner portions include short sections that are angled to each other and include an interior surface 16 that defines an inner corner 20 and an exterior surface 18 that defines an outer corner 22. In my view the skilled addressee would readily understand the meaning of this term by reference to the body of the specification. This term is clear.
Regularly shaped
The term “regularly shaped” in claim 3 was submitted to be unclear as it is considered to have many meanings.
The description at page 3, lines 29-32 states “The term “regularly shaped” as used herein refers to a substantially symmetric polygon”. It further states at page 7, lines 12-19 “it is preferable that the
body 12 of the linkage element 10 defines a regularly shaped interior space 14. In other words, it is preferable that the shank portions 13 of the linkage element 10 are substantially the same length as one another and the angled portions 15 of the linkage element 10 are disposed at substantially the same angle as one another.”
In Euclidean geometry, a regular polygon is defined as a polygon that is equiangular (all angles are equal in measure) and equilateral (all sides have the same length). Such a polygon would also have line symmetry. I can therefore see no clarity issues with this term. This term is to be construed as requiring all the shank portions to be of the same length and the angled portions to have the same included angle.
Exterior surface
In claims 7, 8 and 9, the reference to an “exterior surface” of the angled portions was submitted to be unclear.
I am not sure of the basis for this submission. Surely a chain link will have an exterior surface along the external periphery. The description also identifies this as the surface 18, 18’ which is on the exterior of the link. This term is clear.
Straight edge transversely extending across the exterior surface
The opponent has submitted that the phrase “substantially straight edge transversely extending across the exterior surface” in claim 8 is unclear. However when reference is had to the body of the specification, it is quite clear that the exterior surface rather than being curved may be straight (page 4, lines 17-21). This term is clear.
Protrude outwardly
Claim 9 was also submitted to lack clarity as to how an exterior surface can protrude outwardly. Again when the claim is read in the context of the specification as a whole, it is clear that this refers to the fact that exterior surfaces of those angled portions that are not engaged with adjacent linkage elements are disposed or “protrude” outwardly with respect to those angled portions that are engaged with adjacent linkage elements. The exterior surface of these outwardly disposed unengaged angled portions strike the bark of the tree and improve the debarking efficiency. This term is clear.
NOVELTY
The general test for lack of novelty is the reverse infringement test. The classic formulation of this test was given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20], [1977] HCA 19; 137 CLR 228 at 235:
"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement".
This test is satisfied if the alleged anticipation discloses all the essential features of the invention as claimed (see Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40; (1990) 91 ALR 513 at 517). In order to meet this requirement, the prior art must "contain clear and unmistakeable directions to do what the patentee claims to have invented" (The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 at 486).
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”.
D1: WO 2006/121574 (Peerless Chain)
This is the primary document that has been relied upon by the opponent in its submissions in the SOGAP. It is titled “Debarking chain with passing links” and is clearly directed to solving the same problem as the claimed invention, i.e. improving the wear life of flail chains having oblong shaped chain linkage elements. D1 summarizes the invention as making at least one of the links as a “passing link” that is constructed in such a manner as to permit the passing link to turn with respect to both adjacent links so as to allow the stress and wear to be distributed about the inner perimeter of the passing link. Clearly D1 discloses the integer of the at least one linkage element having an interior space that facilitates rotation of the linkage element with respect to its adjacent linkage element. The only remaining question therefore is whether D1 discloses that the linkage element includes more than three shank portions and more than three angled portions connecting said shank portions.
In relation to this integer of the claimed invention, the opponent relied on the following passages in D1:
“It will be appreciated that "passing" links will have an inner perimeter, surrounding an open space in the center of the link that will be arcuate in at least three different regions of this inner perimeter that may or may not be separated by substantially straight inner perimeter surfaces.” (paragraph 0032) (my underlining)
“The prototype links were somewhat square, which limited the freedom to rotate and reduced the benefit of rotating.” (paragraph 0059)
The applicant’s submissions as to why this integer is not clearly and unmistakeably taught can be summarised as follows:
- D1 is mainly focused on achieving maximum rotatability between adjacent chain links in order to reduce wear of the chain links.
- It teaches chain links having a geometry such that wear is evenly distributed on the inner perimeter of the chain link whereas in the claimed invention the wear is concentrated at the angled portions.
- It teaches away from the claimed invention by noting disadvantages of “somewhat square links”.
- The reference in D1 to at least three arcuate regions that may be separated by straight inner perimeter surfaces is directed to the geometry of the “inner perimeter” of the passing link and not to the geometry of the entire link.
- It is not concerned with increasing debarking efficiency.
I agree with the applicant that D1 is primarily focused on achieving maximum rotatability. This is clear from the following passages in D1:
the passing link being constructed and arranged to permit the passing link to turn with respect to both adjacent chain links in such a manner that allows impact and stress on the passing link, created by being struck by adjacent or next to adjacent chain links and/or the tree, to be distributed about the continuous strand making up the passing link. [0011]
It is an object of the present invention to more equally distribute the stress and wear associated with the repetitive impact to the entire inner and outside perimeter of links along the length of a debarking chain and particularly along the inner and outer perimeter of the second and third links at the end of each chain where the wear and stress of such impacts is concentrated. [0030]
Ideally, in the most preferred embodiments, the inner perimeter will be a continuously arcuate inner perimeter that is substantially round. In the most preferred embodiments, passing links will be round or substantially round links so that they can be easily reoriented with respect to adjacent links with out being limited by any inner perimeter regions that are either "straight" or without a "turning" or arcuate inner perimeter surface. [0032]
It will be appreciated that it is difficult to cost effectively make a perfectly round chain link, therefore, passing links are also envisioned to include generally rounded chain links that have more than two rounded inner perimeter regions, which could be immediately adjacent to one another, that allow the link to easily reorient itself with respect to both of two adjacent links during a flailing operation when such a link is not the end link adjacent only to a single link. [0033]
The wear or impact points will preferably be randomly distributed around the inner and outer perimeter of the passing link. The result of such a random turning or reorientation of the passing link with respect to its adjacent links will preferably be a more evenly distributed wear of the passing links, thereby extending debarking chain wear life as compared to standard debarking chains consisting of elongated oblong links. [0037]
While it is true that D1 does mention that the inner perimeter may have straight inner perimeter surfaces separating arcuate regions of the inner perimeter and that the prototype was somewhat square, in my view that appears to be more a reflection of the fact that it is difficult to form the links perfectly round due to limitations of the rather unusual “bumping” method of manufacture employed. The references relied on by the opponent are isolated references that do not provide a clear teaching to form the links with more than three shank portions and more than three angled portions connecting said shank portions. There is no embodiment described or illustrated that shows links having a square shape with straight shank portions connected by angled portions. Even in relation to the prototype which is stated to be “somewhat square”, in paragraph [0050] where it describes how the prototypes were made it states:
“Test No. 3 - Prototypes of the debarking chain of the present invention having passing links as the second and third links from each end of 9-link (0.656 inch strand diameter links) debarking chains. Each of the passing links were bumped in a Piranha Punch (Model: SEPP 35 Punch 35 ton hydraulic press from Piranha, Hutchinson, KS) to round the straight sides of the links so that the links became substantial rounded. The intent is to allow these links to rotate, thus distributing the impact point such that the typical high wear areas at each end of the second link and at the base (radius closest to the log) of the third link will be minimized.” (my underlining).
It is therefore evident from this passage that the intent was always to make the links as round as possible and not to make it square, even though it ended up being somewhat square. In my view, the reference to straight inner perimeter surfaces in paragraph [32] is an isolated reference that is not fully described in the specification. I also note that this paragraph only states that the inner perimeter “may or may not” be separated by straight inner perimeter surfaces. Anticipation requires more than such isolated references. As Gyles J aptly put it in Apotex Pty Ltd and Another v Sanofi-Aventisand Another (2008) 78 IPR 485:
“anticipation is deadly but requires the accuracy of a sniper, not the firing of a 12 gauge shotgun”.
In my view this isolated reference is at best the firing of a shotgun without any accuracy. It does not plant the flag at the precise destination nor provide clear and unmistakeable directions to the claimed invention. The invention defined in claim 1 is novel over D1.
Claim 14 which is directed to a flailing apparatus includes a chain according to claim 1 and is consequently also novel.
Omnibus claims 15 and 16 are directed to a flail chain and a flailing apparatus respectively. There is no submission from the opponent to suggest that these claims do not include all of the integers of claim 1 or of claim 14 respectively. It therefore follows that these claims are also novel.
The remaining claims are dependent claims and are also therefore novel.
D2: US 60/671012
This is one of the priority documents of D1 and it is not in dispute that it became available to the public at or around the same time as the publication of D1, i.e. 16 November 2006. The disclosure of D2 is very similar to that of D1 and the opponent has stated that all of the passages of D1 relied on are also discussed in D2. In addition they have also stated that they rely on figure 11, which is a photographic image of three alternative debarking chains each of which have the second and third links from each end as passing links and are the same as those chains used in test No 3.
This photographic image in my view does nothing more to establish that the passing links are square with four angled portions connected by four shank portions. For reasons discussed with regard to D1, I also find that the claimed invention is not anticipated by D2.
INVENTIVE STEP
The test for obviousness is whether it would have been a matter of routine to proceed to the claimed invention. In Wellcome Foundation Ltd v V.R. Laboratories (Aust.) Pty Ltd [1981] HCA 12 Justice Aickin stated:
“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.”
Where the invention lies in a combination of features, the question is whether the combination, not each individual feature, is obvious when compared to the prior art base (Aktiebolaget Hässle v Alphapharm Pty Ltd [2002] HCA 59; 212 CLR 411 at 41; Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9 at [116]; [1980] HCA 9; (1980) 144 CLR 253 at 293).
The opponent has submitted that the invention defined in claim 1 lacks an inventive step over document D4 in view of D1. However when I read the submissions, it is clear that the reference to D4 is actually a reference to document D3: US 2795320. The applicant was also of the same view and made their submissions in relation to the combination of D3 and D1.
D3 relates to a debarking machine with a plurality of flail elements. The opponent has relied upon the embodiment shown in figures 9 and 9a in which each flail element includes a substantially rectangular and flexible link 186, at the free end of which is mounted a rectangular metal end link 187. In use the end link 187 will contact the log to remove the bark. It is clear that the rectangular end link will not rotate with respect to the flexible link 186.
However the opponent has submitted that in order to extend the wear life of the links, the skilled person would simply ensure that the “substantially rectangular metal link 187” was mounted to the “substantially rectangular and flexible link 186” in a manner that allows rotation of one of the links with respect to the other in line with the teaching of D1.
I have been presented with no evidence to support this contention. The link 187 has its free log engaging side to be of greater diameter than the side that is mounted on the flexible link so as to improve its wear life. Therefore clearly the teaching is for the link to not rotate and I can find no basis to conclude that the skilled person would be motivated to make the link rotate against the express teaching of this document.
The claimed invention is inventive over D3 in view of D1.
FAIR BASIS
It is a requirement of subsection 40(3) of the Act that the claims must be fairly based on the matter described in the specification. The High Court in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58 at [69], [2004] HCA 58; 217 CLR 274 at 300 approved the words of Gummow J in Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79 at 95:
"the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification"
The opponent has submitted that claim 1 lacks fair basis for the following reasons:
a)It encompasses all sorts of configurations or shapes for the linkage elements, but only some of these configurations are described and therefore the scope of claim 1 extends beyond the matter described in the specification.
b)The structural features of the shank portions being all of the same length and the angled portions being disposed at the same angle are essential features of the invention, but as claim 1 does not positively recite these features, it is not fairly based.
While the claim does not place any explicit limitation on the maximum number of shank and angled portions or in what manner the angled portions interconnect the shank portions, it requires that the interior space defined by the shank portions and the angled portions should facilitate rotation of the at least one linkage element with respect to its adjacent linkage elements. This requirement would naturally exclude those configurations or shapes that would not facilitate rotation with respect to adjacent links.
In relation to the argument that the regular shape of the linkage element is an essential feature of the invention, I note that the High Court in Lockwood (supra) has held that
“It is wrong to seek to isolate in the body of the specification "essential integers" or "essential features" of an alleged invention and to ask whether they correspond with the essential integers of the claim in question”.
The accepted specification includes under the heading “Summary of the Invention” a consistory clause that mirrors claim 1 and there is nothing in the detailed description that follows that would suggest that this consistory clause is inconsistent with or does not reflect the description of the invention in the light of the specification as a whole. In my view, there is a real and reasonably clear disclosure of the claimed invention within the body of the specification. Claim 1 is therefore fairly based.
The opponent has further submitted that claim 9 is not fairly based as it only defines the exterior surface as protruding outwardly, thereby suggesting that the interior surface may protrude outwardly, inwardly or not at all, but the only interpretation that is supported by the description is that of protruding outwardly.
Claim 9 refers to the exterior surface as protruding outwardly and there is clearly disclosure of this in the body of the specification. There is no reference in claim 9 to the interior surface and I do not therefore understand the opponent’s submission as to the fair basis of a feature that is not defined in the claim. In my view, the features defined in claim 9 have a real and reasonably clear disclosure and therefore the claim is fairly based.
UTILITY
The opponent has submitted that the “scope of claim 1 encompasses embodiments which simply would not function as links for flail chains” and that “claim 1 does not recite sufficient structural features for the claim to meet the utility requirement.”
In particular they have submitted that claim 1 does not recite how the shank portions and angled portions are to be interconnected and there is no requirement that they are interconnected to form a closed loop. Also there is no limit on the number of shank and angled portions and no requirement that the number of shank portions equal the number of angled portions.
The general test for utility that has been accepted by the authorities is:
"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 been presented with no expert evidence to suggest that the flail chain as claimed would not perform its function of debarking trees. While I accept there is no upper limit on the number of shank and angled portions and how they are to be interconnected, as discussed under Fair Basis the claim has to be construed in light of the requirement that the interior space facilitates rotation of the linkage element with respect to its adjacent elements. Such a requirement would clearly exclude constructions and shapes that would not work in the manner claimed.
The opponent has not made out the ground of lack of utility.
CONCLUSION
None of the grounds of the opposition has been made out. The claimed invention is novel, inventive, useful, clear and fairly based. I direct that the application proceed to grant subject to any appeal.
COSTS
It is normal in proceedings such as these that costs follow the event and I can see no reason to vary that practice. The opposition has been entirely unsuccessful. I therefore award costs according to schedule 8 against the opponent, Peerless Chain Company.
R Subbarayan
Delegate of the Commissioner of Patents
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