Reflex Instruments Asia Pacific Pty Ltd v Borecam Asia Pte Ltd

[2017] APO 51

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Reflex Instruments Asia Pacific Pty Ltd v Borecam Asia Pte Ltd [2017] APO 51

Patent Application:                2008230012

Title:Core Orientation Measurement system

Patent Applicant:                   Borecam Asia Pte Ltd

Opponent:  Reflex Instruments Asia Pacific Pty Ltd.

Delegate:  Dr W.E. Guinea

Decision Date:  11 October 2017

Hearing Date:  8 June 2017, in Canberra

Catchwords:  PATENTS – section 59 – opposition to the grant of a patent – novelty – inventive step – utility – full description – some claims found to lack novelty – no other grounds successful – opposition successful

Representation:  Patent Attorney for the Applicant: Richard Plummer of Elliptic Legal & Patent Services (by telephone)

Counsel for the Opponent: Phoebe Arcus

Patent Attorney for the Opponent: Chris Williams of Gilbert + Tobin

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application:                2008230012

Title:Core Orientation Measurement system

Patent Applicant:                   Borecam Asia Pte Ltd

Date of Decision:                   11 October 2017

DECISION

The Opposition is successful. Claims 3, 13, 14 and 17 are found to lack novelty. All other grounds of opposition were unsuccessful.

The Applicant has two months from the date of this decision to propose amendments that overcome the deficiency with respect to novelty.

I award costs according to Schedule 8 of the Patents Regulations 1991 against the Applicant, Borecam Asia Pte Ltd.

REASONS FOR DECISION

Background

1. Patent application 2008230012 (“the opposed application”) was filed on 18 October 2008, in the name of Reservoir Nominees Pty Ltd.  The opposed application claims a priority date of 18 October 2007 by virtue of provisional application 2007905715.

2. Reservoir Nominees Pty Ltd requested examination on 1 October 2012, and the opposed application was advertised as accepted on 11 June 2015.

3. On 15 August 2017 an assignment request was received from Reservoir Nominees Pty Ltd. This request was allowed on 21 August 2017, such that the opposed application proceeded in the name of Borecam Asia Pte Ltd. Hereinafter any reference to the “Applicant” is to Borecam Asia Pte Ltd.

4. A notice of opposition was filed by Reflex Instruments Asia Pacific Pty Ltd (the “Opponent”) on 11 September 2015.  The Opponent filed a statement of grounds and particulars (the “SGP”) on 1 December 2015.

5. Evidence in support (“EIS”) was filed on 1 March 2016.  This comprised:

   ·    a first statutory declaration dated 29 February 2016 by Mr Kelvin Laurence Brown (“Brown1”) with supporting exhibit KLB-1; and

   ·     a first statutory declaration dated 26 February 2016 by Professor Jonathan Craig Tapson (“Tapson1”) with supporting exhibits JCT-1 to JCT-5.

6. Evidence in answer (“EIA”) was filed on 8 July 2016.  This comprised:

   ·    a statutory declaration dated 8 July 2016 by Mr Nicky Alfred Kleyn (“Kleyn”).

7. Evidence in reply (“EIR”) was filed on 12 September 2016.  This comprised:

   ·    a second statutory declaration dated 12 September 2016 by Mr Kelvin Laurence Brown (“Brown2”) with supporting exhibit KLB-2; and

   ·     a second statutory declaration dated 12 September 2016 by Professor Jonathan Craig Tapson (“Tapson2”) with supporting exhibit JCT-6.

8. A hearing for this matter was set for 8 June 2016.  The Opponent’s written submissions (the “Opponent’s written submissions”) were filed on 26 May 2017.  The Applicant’s written submissions (the “Applicant’s written submissions”) were filed on 1 June 2017.

9. At the hearing Mr Plumer brought to my attention he did not receive from the Opponent, until the morning of the hearing, a modified novelty table with regard to one of the raised prior art documents.  Consequently I granted leave for Mr Plumer to file further written submissions (the “Applicant’s further written submissions”) on the modified novelty table after the hearing.

10.  Consequently the Applicant’s further written submissions were filed on 22 June 2017.  Although no formal leave to do so was granted, the Opponent filed further written submissions (the “Opponent’s further written submissions”) on the 27 June 2017.

The Invention as Described

11.  The opposed application deals with a system used to obtain the orientation of so called core samples obtained by drilling into the ground.  Such core samples are typically taken in relation to underground mining.  In this regard knowledge of the orientation of such core samples as they actually were in the ground is important in determining the structural requirements of underground mining activities (opposed application page 1, lines 12 to 13).  Because of this a variety of systems have been devised that allow for the determination of core orientation, including both mechanical and electronic means.

12.  The opposed application indicates (at page 1, lines 18 to 21) that movement of the core sample over time can confound mechanical core orientation measurements.  It is said that this has led to the replacement in recent years of mechanical core orientation means by electronic core orientation means (page 1, lines 22 to 24).

13.  The electronic core orientation means are said to fall into two categories.  The first uses a camera to take pictures of an orientation measurement device (for example a compass) at periodic intervals or on demand.  The second category of electronic core orientation means uses electronic sensors to obtain the core orientation.  These may also be taken periodically or on demand. 

14.  A number of problems are then given with regard to the existing electronic core measurement systems.  One of these is the fact that the operator must determine when the core position matches when a true core orientation measurement has occurred.  The second problem is that the operator must then extract the true orientation measurement from all of the other orientation measurements taken by the electronic core orientation measurement system (“ECOMS”).  This is said to require significant labour for proper operation.

15.  A summary of the invention then follows, which I take to be commensurate with consistory statements.  This summary initially outlines a first aspect of the invention which is entirely commensurate with claim 1 as provided further in this decision.  A number of further features are then outlined with regard to the first aspect, with these being commensurate with the claims 2 to 17, all of which are ultimately dependent on claim 1.  After these a second aspect is outlined, and this is commensurate with claim 18.  Given that the aspects are commensurate with the claims, I will not discuss these in detail here.

16.  Rather, for present purposes the nature of the invention is best understood by reference to the preferred embodiments as outlined with regard to figures 1 to 5.  These figures are reproduced below.

17.  Figure 1 illustrates a core orientation measurement system 10 for use according to the first and second embodiments of the invention.  It comprises a measurement unit 14, with this including at least one accelerometer 24, a vibration (movement) sensor 26, a measurement processor 28 and a memory 30.  The system also comprises a data handset 12, with this including a processor 16, a memory 18, a display 20 and a user interface 22.

18.  Figure 2 demonstrates the steps used in obtaining an indication of the core orientation using the system 10 of figure 1.  At step 100 both the measurement unit 14 and the data handset 12 are initialised.  At step 102 certain parameters and/or logging information is entered into the user interface.  At step 104 the measurement unit is incorporated into a drill string.  At step 106 the measurement processor 28 waits for an initial time delay (if any) before obtaining measurement values from each of the accelerometers 24 at step 108.  These measurements are then processed to determine an orientation measurement, with this being stored in the memory 30.  After this the measurement processor waits for a time interval either set by the operator or as set by default (step 110).  Steps 108 and 110 are then repeated until such time as the vibration sensor 26 indicates that there is no movement for a predetermined time period (step 112).  The measurement processor then sets a flag that is indicative that drilling has stopped (step 114).

19.  The measurement processor 28 continues to obtain measurements from the accelerometers 24 at steps 116 and 118 in a manner analogous to steps 108 and 110, i.e. the measurement processor continually obtains measurements after each time interval.  This continues until the vibration sensor 26 detects a period of sustained movement (step 120).  Upon this occurring the measurement processor stops seeking measurements and initiates a shutdown procedure (step 122).  The measurement processor remains shut down until it senses a communication link with the data handset 12 (step 124).  The measurement processor downloads the orientation measurements from the memory 30 to the memory 18.  The processor 16 then determines which orientation measurement values were taken during the stationary period identified by the vibration sensor 26.  The mode of these values is then given as the true indication of the core orientation prior to core removal (step 128), and can be communicated to the operator via the display 20.  Notably, in this embodiment the predetermined time period is set to be at least two times greater than the interval period of step 110.  This ensures that an abnormal no movement reading does not result in final processing by the core orientation measurement system 10.

20.  Figure 3 illustrates the second embodiment, which operates in a manner directly analogous to the first embodiment until step 212.  After the vibration sensor 26 determines that there has been a period of no movement, a countdown timer is initiated by the measurement processor 28 (step 214); unlike the first embodiment it is not explicitly stated that a flag is set when there is a period of no movement.  The measurement processor repetitively obtains measurements from the accelerometers 24 at steps 216 and 218 in a manner analogous to steps 116 and 118 of the first embodiment.  However unlike the first embodiment, this continues until the expiry of the countdown timer (step 220), rather than the detection of further movement.  To ensure that the measurements are not affected by movement, the countdown timer is arranged to reset if the vibration sensor detects movement beyond a set threshold.  Steps 220, 222, 224 and 226 are directly analogous to their counterparts from the first embodiment.  Step 228 is similar to step 128, however the median is returned as the true orientation measurement rather than the mode. 

21.  In the second embodiment the processor 16 determines whether each of the measurement values differ from any other measurement value.  If so the processor stops the checking and sends a message to the operator via display 20 that the dataset includes an abnormal value, and asks the operator if they wish to view the entire stationary measurement dataset (step 230).  If so this is performed via the display, so that the operator can determine whether the returned median value is the most accurate indication of the true orientation of the core or whether another measurement value is more accurate (step 232). 

22.  Another difference between the first and second embodiments is that in the second embodiment the memory 30 is said to have a fixed number of storage elements.  This means that when the number of measurements from the accelerometers exceeds this fixed number, the oldest measurement is discarded for a new measurement; that is the memory array is said to be first in first out (“FIFO”).

23.  The third embodiment is shown to work in conjunction with the core orientation measurement system 300 of figure 4.  This system is identical to the core measurement system 10 of figure 1, except that the data handset 302 and the measurement unit 304 each comprise respective external memory interfaces 310, 326, adapted to accommodate a memory card 316.

24.  The operation of the third embodiment is in most respects identical to the second embodiment, except for three differences.  The first difference is that when the capacity of the internal memory 324 of the measurement unit 304 is exceeded the oldest measurement values are written to the memory card 316.  The second difference is that the measurement processor 322 downloads all measurement values in the internal memory to the memory card as well as to the internal memory 308 of the data handset 302 (step 378).  The final difference is that the operator may remove the memory card and view measurements taken at other time periods.

25.  The specification then ends with a list of “modifications and improvements” to the above embodiments.  Of these the fact that the measurement processor 28, 322 can perform the job of determining the measurement considered to be indicative of the true core orientation, rather than the processor 16, 306 is most pertinent to present circumstances.  I do not consider it necessary to go into the remaining “modifications and improvements” at this point, however I will revisit these later in this decision if this proves necessary.

26.  As can be seen the upshot of the invention is to in effect ensure that a true core orientation measurement is based on a set of measurements that were recorded during a period when the drill string was stationary or at rest.

The Opposed Claims

27.  The opposed application as accepted ends with 18 claims, of which claims 1 and 18 are independent.  I have reproduced the claims below.  For convenience throughout the rest of this decision I have labelled the integers of claims 1 and 18 using the numbering system as shown in brackets below.

1. (1.1) A core orientation measurement system comprising:

(1.2) at least one orientation measurement sensor;

(1.3) a movement sensor;

(1.4) a measurement processor;

(1.5) and a memory,

(1.6) where, in use, the measurement processor obtains orientation measurements from each of the at least one orientation measurement sensor at predetermined time intervals and stores the orientation measurements in the memory,

(1.7) the measurement processor operable to provide an indication of the true orientation of the core as an orientation measurement taken from a stationary measurement set

(1.8) representative of the orientation measurements taken in a stationary time period extending from the time when the movement sensor first recorded a period of substantially no movement until the completion of a trigger event.

2. A core orientation measurement system according to claim 1, where the trigger event is the recording by the movement sensor of a subsequent period of sustained movement.

3. A core orientation measurement system according to claim 1, where the trigger event is the expiry of a countdown timer of set duration.

4. A core orientation measurement system according to claim 1, where the trigger event is the breaking of the core.

5. A core orientation measurement system according to claim 1, where the trigger event is the attachment of an overshot.

6. A core orientation measurement system according to any one of claims 1 to 5, where the orientation measurements are stored in an array held within the memory, the array having a number of elements equal to an expected stationary time divided by the predetermined time interval, with the recording of measurements being processed on a first-in, first-out basis.

7. A core orientation measurement system according to any one of claims 1 to 5, where the orientation measurements are stored in an array held within the memory, the array having a number of elements equal to an expected stationary time plus a further time period representative of the duration of the trigger event divided by the predetermined time interval with the recording of measurements being processed on a first-in, first-out basis.

8. A core orientation measurement system according to claim 7, where, on satisfaction of the trigger event occurring, the measurement processor operates to delete from the stationary measurement set those orientation measurements taken in the duration of the trigger event.

9. A core orientation measurement system according to any one of claims 1 to 8, where the period of substantially no movement is equal to twice the duration of the predetermined time interval.

10. A core orientation measurement system according to any one of claims 1 to 9, where the orientation measurement taken from the stationary measurement set is the mode of the stationary measurement set.

11. A core orientation measurement system according to any one of claims 1 to 9, where the orientation measurement taken from the stationary measurement set is the median value of the stationary measurement set.

12. A core orientation measurement system according to any one of claims 1 to 9, where the orientation measurement taken from the stationary measurement set is the average of the values in the stationary measurement set.

13. A core orientation measurement system according to any one of claims 1 to 12, further comprising a data handset in selective communication with the measurement processor for displaying the orientation measurement taken from the stationary measurement set.

14 .A core orientation measurement system according to claim 13, where the data handset further includes a user interface to allow an operator to provide drill log information and/or set parameters relating to the operation of the core orientation measurement system.

15. A core orientation measurement system according to any one of claims 1 to 14, where the measurement processor initiates a shut down procedure on completion of the trigger event.

16. A core orientation measurement system according to any one of claims 1 to 15, where the measurement processor compares values within the stationary measurement set and, if any comparison exceeds a set tolerance, to query whether the operator wishes to view all orientation measurements in the stationary measurement set.

17. A core orientation measurement system according to any one of claims 1 to 16, where the orientation measurements obtained from each orientation measurement sensor are only recorded if a vibration sensor records a value in a set threshold representative of the measurement unit being substantially stationary.

18. (18.1) A method of obtaining a core orientation measurement comprising:

(18.2) obtaining an orientation measurement from at least one orientation measurement sensor at predetermined time intervals;

(18.3) identifying when a movement sensor has recorded a period of substantially no movement;

(18.4) identifying the completion of a trigger event; and

18.5) providing an indication of the true orientation of the core as an orientation measurement taken from the measurements obtained between the initial time period of substantial no movement and the time of completion of the trigger event.

The Opposition

28.  In the SGP the Opponent pursued grounds under:

·     s18(1)(b)(i) – the invention as claimed is not novel;

·     s18(1)(b)(ii) – the invention as claimed does not comprise an inventive step;

· s18(1)(c) – is not useful; and

· s40(2)(a) – the specification does not describe the invention fully.

29.  These grounds were all pursued at the hearing and in the Opponent’s written submissions.

Onus of Proof

30.  As examination was requested prior to 15 April 2013, the changes brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“RTB”) do not apply to the opposed application.  As such the previous burden of proof applies to this opposition, namely that the Opponent will only succeed if they can convince the Commissioner that it is clear or practically certain that the patent is invalid; see 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].

The Skilled Addressee and the Evidence

31.  The skilled addressee is taken to be a non-inventive worker in the art with respect to the invention concerned, is taken to have the common general knowledge (“CGK”) in the art, and could be a team of people; see Root Quality Control Pty. Ltd. v Root Control Technologies Pty. Ltd. [2000] FCA 980 at [70] to [71] (“Root Quality Control”); Catnic Components Limited and Another v Hill & Smith Limited (1982) RPC 183 at 242 to 243 and Minnesota Mining & Manufacturing Co. vBeiersdorf (Australia) Ltd. [1980] HCA 9 at [115]; (1980) 144 CLR 253 at 292. In particular in Root Quality Control at [71] Finkelstein J. stated that “... the patent is directed to a person interested in making, constructing, compounding or using the invention...”

32.  I consider that the skilled addressee is a person or team of persons involved in or interested in the design, manufacture and the use of core orientation systems for orientating core samples.

33.  There was some disagreement between the parties as to whether the experts were able to represent the notional skilled addressee.  I will consider these points below before continuing.

34.  At [11] of their written submissions the Opponent contended that the skilled addressee must include “…(1) product suppliers involved in the supply and use of equipment in the mining and drilling industries; and (2) engineers specialising in sensors, instrumentation and techniques for measuring orientation in the mining and drilling industries”.  There was general agreement between the parties as to the second point; see the Applicant’s written submissions at [12] and Opponent’s written submissions at [11]. 

35.  However the Applicant disagreed with respect to item 1.  Specifically at [14] of their submissions the Applicant states that:

“The Application as claimed involves the components that make up a core orientation device as well as the manner in which those components interact with each other. While it is possible that specific product suppliers may have the knowledge to understand these components, when such a person is viewed as the notional person skilled in the art they would not have this knowledge. To elaborate by simplified example, a second hand dealer in haul trucks is involved in their supply and use, but would not be considered to have knowledge of how the various mechanical, electrical and electronic components of such haul trucks interact.

Consistent with this view the Applicant disputed Mr Brown’s ability to represent the skilled addressee at [23] to [26] of their written submissions.

36. However I do not agree with this line of reasoning by the Applicant. As noted above the skilled addressee can be a composite being. It should be apparent that Mr Brown is at least entitled to partake in that composite from my conclusions at [32] above and in view of his experience in both overseeing drill crews using core orientation apparatus as well as providing advice on core orientation tools in his role as a regional manager for Ace Drilling; see [4] to [13] of Brown1.

37.  It is apparent from [6] to [22] of Tapson1 and his CV at JCT-2 that Professor Tapson is in a position to represent the views of the skilled addressee at least according to item (2) above.  This is conceded by the Applicant at [15] of their written submissions.  However the Applicant disputes Professor Tapson’s ability to represent the views of the skilled addressee on two grounds.  These are: (i) that Professor Tapson’s skills and experience relate to overseas jurisdictions and thus he is unable to provide a view on what would be known or done by the skilled addressee in Australia (Applicant’s written submissions at [15] to [19]) and (ii) that Professor Tapson is clearly inventive and thus “…it is difficult to see how Professor Tapson can make an assessment as to the inventiveness of the present application as the non-inventive person skilled in the art would…” (Applicant’s written submissions at [22]).  I will consider each of these points below.

38.  In relation to item (i) I note that the Applicant points out that Professor Tapson gained relevant experience from companies in South Africa.  The Applicant also observes that one of these companies was considerably larger than either party to the present opposition, there being a tacit suggestion that the parties are representative of the skilled addressee in Australia.  I have two difficulties with this line of reasoning.  Firstly at least some of Professor Tapson’s experience in the field occurred in Australia before the priority date; see [21c] and [22] of Tapson1.  Secondly there is no evidence to support the Applicant’s assertions that the skilled addressee in Australia would routinely have different skills or knowledge as compared to a skilled addressee in other jurisdictions.  In the absence of such evidence it would seem highly improbable to me that a large capital intensive field with global reach and concerns, such as the field presently in question, would be stratified along national lines in any significant way.  Indeed I note that the list of relevant journal articles and conference presentations given by Professor Tapson (see [16] and [18] of Tapson1) are international in nature and it would be expected that developments in these would be followed by skilled addressees all over the world, including in Australia. 

39.  In relation to item (ii) the Applicant points to a list of Professor Tapson’s patent and patent applications and draws the conclusion that Professor Tapson is unable to represent the skilled addressee.  The Applicant has supported this contention via reference to Wood v Westaflex (Aust) Pty Ltd (1989) 20 IPR 387 (“Wood”) at 395. It is worth repeating the relevant passage from 395 of Wood:

“This evidence of what passed through Mr Trihey's mind was admissible but has been attacked as ex post factor reconstruction on the part of an expert. I have no reason to doubt that Mr Trihey has told the truth about his thoughts as the developer of Vulcan's ducting. However he could not see beyond the difficulties he perceived to the reality of a commercial product. Thus a commercial product of the kind he has described was not obvious to him, and the possibility of it was abandoned by Vulcan as impracticable. It is impossible to know what further difficulties Mr Trihey might have met if he had not been turned aside by the fire hazard factor. It has also to be taken into account that Mr Trihey is, according to his evidence of research and development work and of his patent applications, a professional inventor. He does not belong to the category of non-inventive skilled workers in the field which is built into the test of obviousness: Minnesota Mining & Manufacturing Co v Beiersdorf (Aust) Ltd (1980) 144 CLR 253 at 293; 29 ALR 29.” (emphasis added)

40.  It would appear that the Applicant is relying on the text emphasised above to support the proposition that as Professor Tapson is inventive, then little or no weight should be given to his evidence.  However I see no reason to interpret the above passage in so bald a manner.  It is apparent from the context of King J’s discussion that the inventive nature of the expert concerned (Mr Trihey) was taken into account, along with other factors, in weighing up whether it would have been obvious to pursue a certain course.  Consequently the proposition to be drawn from Wood is that proper weighing of all relevant factors in reaching a conclusion of fact need to be taken into account.  Consequently, despite the Applicant’s assertions, I consider that Professor Tapson is, in a general sense, able to represent the views of the skilled addressee.

41.  With regard to Mr Kleyn neither party has directly assessed the status of Mr Kleyn as a skilled addressee.  I note that Mr Kleyn has not given any significant details of his knowledge or experience in the field.  Nevertheless it is indicated at [1] of Kleyn that Mr Kleyn is the inventor of the present application.  I consider that this experience is sufficient, with some reservation, to allow Mr Kleyn to provide information on what was known or used by the skilled addressee before the priority date.

42.  I observe that while the Opponent has not directly challenged Mr Kleyn’s ability to represent the skilled addressee, they have launched an attack on his credibility as a witness, in contrast to Mr Brown and Professor Tapson.  These representations where based on statements on the credibility of Mr Kleyn, Mr Brown and Professor Tapson made in Australian Mud Company Pty Ltd v Coretell Pty Ltd (No 4) [2015] FCA 1372 (“AMC no 4”).  In particular, at the hearing, Ms Arcus took me to [150] of AMC no 4 which reads as follows:

“I have no doubt that Mr Kleyn structured his affairs to minimise his financial exposure should this litigation, or subsequent patent litigation against the respondents, succeed. I totally reject the evidence he gave of the transfers of the various businesses. I accept the submission for the applicants that the evidence of Mr Kleyn should be accepted only if it is independently corroborated by other credible witnesses or documents.” (emphasis added)

43.  Noting the passage in emphasis above, Ms Arcus invited me to apply this conclusion to the evidence of Mr Kleyn in the present matter.  In making his submissions for the Applicant, Mr Plumer responded to this by stating that “…the hearing officer is reminded that those proceedings are to a separate matter, and as such are not relevant to the matter before us today…”. 

44.  Ultimately I agree with Mr Plumer.  I am not aware of any legal principle or precedent that would justify importing the findings concerned from AMC no 4 into the present matter.  Nor has the Opponent identified any such legal principle or precedent.  It follows that I reject the Opponent’s contentions that I import credibility findings from AMC no 4 into the present matter.

45.  Finally, I note that it will be up to me, as the decision maker, to determine if any particular part of the evidence that I intend to rely upon is tainted by hindsight or bias and to weigh such evidence accordingly. 

Novelty

46.  The test for determining novelty is often expressed in the form of the reverse infringement test as given in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20]; (1977) CLR 228 at page 235; 13 ALR 605 at page 611 (“Meyers Taylor”):

“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.”

47.  In determining whether a disclosure comprises an infringement, it is convenient to consider the principles laid down in General Tire & Rubber Company v The FirestoneTyre and Rubber Company Limited [1972] RPC 457 at pages 485-486) (“General Tire & Rubber”) as to what a skilled addressee would do based on the disclosure in question:

“…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 ... To anticipate the patentee’s claim the prior publication must contain clear and unmistakeable directions to do what the patentee claims to have invented ... A signpost, however clear, upon the road to the patentee's invention will not suffice.”

Consideration of Novelty in view of the Prior Art

48.  In their written submissions at [38] the Opponent alleges that certain claims lack novelty in view of the “Icefield Tools High Side Seeker Brochure” and Australian patent 2008229644.  Initially I will consider whether either of these documents deprive claims 1 and 18 of novelty, and will extend my analysis to the dependent claims if this proves necessary.

The High Side Seeker Brochure (“HSSB”)

49.  The Opponent alleges that claims 1, 4, 6, 10 to 14 and 16 to 18 are anticipated by the HSSB at [45] to [50] of their written submissions.  I will first consider the general nature of the HSSB and then consider whether it deprives the claims concerned of novelty.  I will initially consider claim 1, then extend my analysis to the remaining claims if this proves necessary.

50.  This document is provided in the form of a brochure at JCT-4, with an apparent date of January 2007.  While the Applicant has not disputed the publication date, I note that pages 28 to 32 of KLB-2 indicate that the brochure concerned was obtained in pdf form by the Opponent on 21 February 2007.  KLB-2 also indicates that information on what appears to be an earlier form of the High Side Seeker was publically available on the internet on 26 October 2006 and 22 February 2007.  I therefore have no doubt that the HSSB was publically available before the priority date.

51.  From the little detail apparent on the brochure it is clear that the High Side Seeker is a type of electronic downhole survey tool that can determine the orientation of core samples.  The High Side Seeker comprises at least two movement sensors in the form of triaxial accelerometers.  The device also has an internal memory for storing data points and can take measurements at a minimum interval of 5 seconds (“shot interval”).  An external trigger input can be connected to trigger a reading on certain events occurring, for example the detection of a core break.

52.  It is apparent from the discussion above that the HSSB discloses many of the features of independent claim 1.  However I am not satisfied that it discloses the following feature of claim 1. 

(1.8) representative of the orientation measurements taken in a stationary time period extending from the time when the movement sensor first recorded a period of substantially no movement until the completion of a trigger event.  (underlining added)

53.  In alleging lack of novelty the Opponent has relied upon Professor Tapson’s evidence, in particular the novelty table with regard to the HSSB provided in JCT-5.  It is worth repeating Professor Tapson’s comments on feature 1.8 from JCT-5 below:

“This integer requires “stationary measurement set” in integer 1.7 to extend until the completion of a “trigger event”.

The High Side Seeker Brochure, in my view, discloses this feature in, for example, the following passages:

The High Side Seeker® has an external trigger input. This input can be connected to a switch or other sensor to trigger a reading when, for example, a core break is detected.

Trigger Input: Active low with internal pull-up. Suitable for switch closure or open-collector input.

The above passage reveal (sic) to me that the High Side Seeker measures orientation until a “trigger event” (e.g. a core break). Therefore, in my view, integer 1.8 of claim 1 of the Patent Application is disclosed in the High Side Seeker Brochure.” (emphasis in original).

54.  Professor Tapson’s understanding of the operation of the HSSB is supported by Mr Brown at [30] of his first declaration:

“The High Side Seeker consists of triaxial sensors, a handset interface and external trigger system. It operates by providing orientation indications at pre-determined intervals (i.e. "shots"), including during the measurement period of drill silence. The external trigger system acts as a "switch closure" to terminate the measurement period at the conclusion of the drilling run, namely detachment of the core from its parent rock.”

55.  I note here that while Professor Tapson initially refers to “until the completion of a trigger event”, he ultimately indicates that the HSSB measures orientation until a trigger event.  It does seem, from his evidence elsewhere that Professor Tapson has treated until a trigger event as synonymous with until the completion of a trigger event.  Paragraph [35] of Tapson2 is illustrative of this:

“Integer 1.8 does not require cessation of orientation readings on completion of a trigger event. As noted at paragraph 14 above, claim 1 simply requires provision of an “indication of orientation” from a stationary measurement set extending from detection, by the movement sensor, of substantially no movement “until a trigger event”. In any event, the HighSide Seeker Brochure also refers to the trigger system being “suitable for switch closure” on completion of a trigger event, such as a core break. Even if a cessation of orientation readings on completion of a trigger event were required by integer 1.8 (which I do not accept), then the “switch closure” referred to in this passage of the HighSide Seeker Brochure involves such cessation of recording of orientation on completion of the trigger event.” (italics in original, underlining added)

56.  This situation poses the question, is there any difference, in the context of the claim, between until the completion of a trigger event as opposed to until a trigger event?  In answering this question I consider it pertinent to construe both of these terms before continuing.

57.  In this regard I note that the Macquarie Dictionary provides several definitions for trigger.  The most relevant of these for present purposes are:

“3. Electronics any circuit which is used to set a system in operation by the application of a single pulse.

4. a stimulus or cause: the trigger for a general election.”

58.  With regard to “event” the Macquarie Dictionary offers a number of definitions, of which the following are most relevant for present purposes:

“noun 1.  anything that happens or is regarded as happening; an occurrence, especially one of some importance.

2.  the fact of happening: to wait for the event of a disaster.”

Notably the most relevant definitions of “happen”, “happening” and “occurrence” are, respectively:

happen: “verb (i) 1.  to come to pass, take place, or occur.”

happening: “noun 1.  an occurrence, event.”

occurrence: “2.  something that occurs; an event or incident: a daily occurrence.”

59.  With regard to “until”, the Macquarie Dictionary provides several definitions of which the following is most relevant for present purposes:

“–preposition 3.  onward to, or till (a specified time); up to the time of (some occurrence).”

60.  I observe that the Macquarie Dictionary provides the following relevant definitions for completion, most relevant for present purposes of completion:

“noun 1.  the act of completing.

2.  state of being completed.

3.  conclusion; fulfilment.”

61.  Taking the above into consideration I construe the relevant phrases as follows:

i.“until a trigger event” – meaning “up to the time of an event, said event comprising a stimulus or cause with regard to something else”.

ii.“until the completion of a trigger event” – meaning “up to the time of the conclusion of an event, said event comprising a stimulus or cause with regard to something else.”

62.  From my construction of ii it is clear that the time in question runs up to the conclusion of the event concerned.  The construction of item i merely refers to “the time of the event”.  This is clearly less restrictive than item ii and begs the question, what is the time of an event?  I consider that this depends on the nature of the event concerned. 

63.  In general terms, where the event is of extended duration, I consider that any time from the beginning of or during the progress of the event could be commensurate with the time of the event concerned.  Again it would depend on the nature of the event concerned as to which of these possibilities might apply.  For example if the event was a concert one would normally consider “up to the time of the concert” to refer to the time at which the concert begins. 

64. In this regard I note that I have not included “the completion of the event” as a possibility at [61]. I consider it rather unusual to refer to a point in time at which an event has concluded to be commensurate with “the time of the event” concerned. In this regard I further note that the definition of “event” places it as something that happens, or is regarded as happening” i.e. it exists in the sense of the present tense.

65.  Where the event is instantaneous it is rather meaningless to apply differentiations (such as the beginning, progress or completion) to “the time of the event”, since by definition the time of the event is a definite and fixed point in time.  In such cases, where the event concerned is a trigger event, one would simply say “until a trigger event”.  While one could map “the beginning of” or “during the progress of” to such an event, this would be rather unusual and would not generally be countenanced in the ordinary use of the English language.

66.  In support of the above construction, I note that there are significant practical ramifications in taking measurements until the completion of a trigger event.  Specifically the difference between until a trigger event and until the completion of a trigger event in the context of the specification is important.  This is illustrated in the opposed application at page 3, lines 23 to 26:

“Further, on satisfaction of the trigger event occurring, the measurement processor may operate to delete from the stationary measurement set those orientation measurements taken in the duration of the trigger event. In this manner, the resulting stationary measurement set should equal the orientation measurements stored in the array.”

67.  The undesirability of having movement while taking core orientation measurements is also corroborated by the evidence:

“During the drilling process, it is common for the driller to cease all drill movement and activity prior to breaking the core. It is during this time that the driller seeks to record the time on the surface timing device. These two actions are designed to ensure that the orientation measurement taken during the period of inactivity are the best possible measurements of orientation of the core sample and that this measurement can be properly identified when the downhole unit returns to the surface.” (Kleyn at [4])

“…As Mr Kleyn acknowledges at paragraph 4 of the Kleyn Declaration and I agree, the method for operating such tools as at October 2007 involved the driller ceasing drilling at the conclusion of the core run and recording an orientation measurement during this stationary period. The stationary measurement period was used because, at this time, the inner tube is not spinning and therefore the orientation of the inner tube (measured by the core orientation instrument) reflects the orientation of the core sample within the inner tube at this time. All of the electronic orientation tools in October 2007, outlined in my First Declaration, involved measurement of orientation during a stationery measurement period.” (Brown2 at [14])

“This feature relates to deleting orientation measurements taken during a trigger event, including for example subsequent movement or retrieval of the core sample after drilling.

In my opinion it would be immediately clear to a skilled person in in (sic) the Field as at October 2007 that measurements taken during a trigger event involving movement or after core break are unreliable, irrelevant and cannot be used to provide an in situ the indication of the orientation of the core sample underground. Further, there are design considerations which, in my opinion, would have lead a typical design team to include this feature, including the limited storage space in memory devices available at the Priority Date.” ([75] and [76] of Tapson1, in discussing the deletion feature of claim 8)

Consequently where the trigger event comprises movement of some duration, this will clearly have a material effect on determining the orientation of the core which will need to be taken into account in some fashion. 

68.  Turing back to the HSSB, the trigger event in question is the detection of core break, which results in a reading being taken.  Although it does not directly come out in the evidence or in the HSSB, I consider it reasonable to believe that the time of actual core break and detection of the core break are in effect simultaneous, given the electronic equipment involved. Certainly it would be substantially instantaneous in comparison to the minimum shot interval of 5 seconds. Core break would also seem to comprise a fixed point in time, being the time at which the core is in fact broken. 

69.  Conversely, even if I concluded that the detection of core break is an extended point in time, then at best the HSSB would seem to teach the taking of measurements up to the beginning or during the progress of detection of core break.

70.  In view of my construction, it should be apparent that I consider the HSSB, at best, to be teaching the taking of measurements up to the time of a trigger event, being the detection of core break.  Consequently I see no clear and unmistakable directions with regard to feature 1.8 in the HSSB, contrary to the assertions of the Opponent and Professor Tapson.

71.  It should be apparent that I have arrived at a different conclusion than that of Professor Tapson due to the differences in construction between until a trigger event and until the completion of a trigger event.  In this regard I note that it appears that Professor Tapson was provided with, and analysed, the opposed application before considering the novelty of the claims in suit against the HSSB; see Tapson1 at [40] to [50].  While such an analysis process is not necessarily fatal to Professor Tapson’s arguments, I consider that Professor Tapson’s unexplained and apparently equivalent treatment of “until a trigger event” and “until completion of a trigger event” requires at least some explanation.  In the absence of such explanation it is an open question as to whether Professor Tapson has simply overlooked the claim language or has imbued features into the HSSB that would not be read out of this on a fair reading of the same as a result of prior analysis of the opposed specification.  In these circumstances I am not satisfied that the evidence shows that there are clear and unmistakeable directions for feature 1.8 in the HSSB, noting that in the event I was to find a lack of novelty, this would be directly based on Professor Tapson’s evidence with regard to the HSSB.  

72.  For completeness I note that even if I were to overlook the above issues, and if I were to agree with Professor Tapson’s construction, there are still latent difficulties with Professor Tapson’s and Mr Brown’s evidence that present me with difficulties in finding in the Opponent’s favour.  I will consider these below.

73.  The first is the fact that there appear to be contradictions within Mr Brown’s evidence, and between his evidence and Professor Tapson’s, with regard to how the external trigger in the HSSB works.  Initially Mr Brown understood that the external trigger system of the HSSB “…acts as a "switch closure" to terminate the measurement period at the conclusion of the drilling run, namely detachment of the core from its parent rock.” (Brown1 at [30]), noting that identical wording is used at [55] of Tapson1.  However at [16] of Brown2 it is stated that “…the High Side Seeker Tool's external trigger system involved triggering a final reading and switching off orientation measurements before breaking the core from its surrounding rock, and then stating at [17] of Brown2 that “The above passages of the High Slide Seeker Brochure reveal to me that the trigger system is used to trigger a reading at the conclusion of the drilling run (when the drill is stationery), and then to "switch close" the tool's measurement of orientation when the tool is "pulled-up" to the surface.”  These apparent contradictions bring into doubt how or even whether core break in the HSSB is used as a trigger to stop taking orientation measurements.  While it is entirely possible that these statements are mutually reconcilable, it is not apparent from the evidence provided or from the scant disclosure of the HSSB how this is the case. 

74.  Secondly in responding to the EIS, Mr Kleyn suggests that the HSSB (“Icefield Tool”) does not actually commence measurements until a trigger event is detected:

“The evidence provided in respect of the Icefield Tool comprises of a two page product brochure (see Exhibit JCT-4). The first page of the product brochure includes the main reference to an External Trigger. This reference is in the form of the fifth bullet point where it is stated:

"The High Side Seeker has an external trigger input. This input can be connected to a switch or other sensor to trigger a reading when, for example, a core break is detected."

My understanding of this fifth bullet point is that the switch is used as an initiator of a signal to commence taking a measurement(s) when a trigger event is detected. There is no indication that the switch or sensor can operate to determine when to cease taking measurements as required in the claims of the Patent.”

75.  Mr Kleyn’s criticisms, at least with regard to the HSSB trigger event comprising a signal to commence orientation measurements, appear valid with regard to the claims in suit.  It is apparent that the completion of the trigger event in the opposed claims bookends the orientation measurements, rather than signalling the start thereof.

76.   However in responding to Mr Kleyn, both Professor Tapson and Mr Brown stressed that their understanding of the HSSB was informed by the conventional operation of core orientating devices, being that the orientation measurements are taken in the stationary period before core break:

“Before October 2007, core drilling operations commonly involved providing an indication of orientation taken from the stationary period, when drill rotation had ceased, because that was when an accurate orientation reading could be taken (I note that Mr Kleyn also recognises this at paragraph 4 of the Kleyn Declaration)… Similarly, as a result of the reference in the brochure to the tool’s suitability for “core orientating work”, I understand the instrument described in the HighSide Seeker Brochure to be usable in the conventional manner for core orientation work. It would have been clear to me in October 2007, and in my experience and observation clear to others in the Field, that the instrument described in the brochure would have measured orientation at the conclusion of the drilling run when the drilling was stationary because that was the expectation of all tools suitable for “core orientating work” at that time.” (Tapson2 at [32])

“In response to paragraph 12 of the Kleyn Declaration, the High Side Seeker Tool described in the brochure, like all other electronic orientation tools available before October 2007, was used to measure orientation during the period when the drill was stationary immediately before core break. Anyone with a basic understanding of core orientation tools in October 2007 would understand that the instrument described in the High Side Seeker Brochure would need to operate in this manner in order to function.”(Brown2 at [17]).

77.  Professor Tapson’s and Mr Brown’s position on the importance of the core being stationary when taking orientation measurements is supported at other places in the evidence and in the opposed application, as is apparent from [67] above.

78.  Despite the stated understanding of Professor Tapson and Mr Brown of the necessity of the core being stationary, neither Professor Tapson nor Mr Brown have commented on how the HSSB would cope with this in practice, noting that at least some of their evidence (JCT-5 at page 5 discussion of claim 1, Brown1 at [30]) indicates (assuming I agreed with Professor Tapson’s equivalent treatment of “until a trigger event” with “until the completion of a trigger event”) that the orientation measurements of the HSSB would be made up to the time of core break i.e. measurements would be taken while the core is breaking.  Given the scant disclosure of the HSSB, it is difficult to reconcile the suggestion that the HSSB takes orientation measurements during breaking of the core, when movement is to be expected, with the fact that both Professor Tapson and Mr Brown have indicated that the orientation measurements must be taken when the core is stationary.  Indeed it is open to speculate that the skilled addressee would simply arrange for the HSSB to not take any orientation measurements at all during the process of the core breaking or during any other time of substantial movement. 

79.  It would seem that Professor Tapson, and to a lesser degree Mr Brown, have read in mutually incompatible requirements for the skilled addressee to deal with into the operation of the HSSB without providing adequate explanation as to why the skilled addressee would do so, as opposed to other potential courses of action, noting that this is an important point in view of the scant disclosure of the HSSB.  This is suggestive of the use of hindsight to interpret features of the opposed claim into the HSSB.  This is clearly averse to being satisfied that there are clear and unmistakable directions for feature 1.8 in the HSSB.

80.  Alternatively it may be that Mr Kleyn is correct in that the HSSB does not actually take any orientation measurements until after a trigger event, which aligns with the plain meaning of the words of the HSSB as taken at face value.  It could also be argued that this situation is in alignment with Professor Tapson’s and Mr Brown’s statements about movement in that one would expect that after the core is broken that there would again be no movement, assuming that the operator did nothing to disturb the drill at this point in time.

81.  The upshot of [78] to [80] above is that it is rather dubious as to whether the HSSB does in fact take measurements before the core break (the trigger event) as asserted by Professor Tapson and Mr Brown, or rather simply takes an orientation measurement after core break as per the plain reading of the HSSB.  In this regard, and although it is not definitive, it is rather curious that nothing more detailed than a trade brochure has been provided with regard to operation of the HSSB.

82.  It follows from the above that I am not satisfied that claim 1, and thus also claims 2 to 17 lack novelty in view of the HSSB.  I note that feature 18.5 of claim 18 corresponds to feature 1.8 of claim 1.  It therefore also follows that I am not satisfied that claim 18 lacks novelty in view of the HSSB.

83.  Before continuing I note that there are some peculiarities in the construction of claim 3 that will be considered with regard to Australian Patent 2008229644.  However these peculiarities ultimately have no bearing on the novelty or otherwise of claim 3 with regard to the HSSB and so have not been mentioned here.

Australian Patent 2008229644 (“2iC”)

84.  The Opponent alleges that claims 1 to 7, 13 to 15, 17 and 18 are anticipated by 2iC at [51] to [57] of their written submissions.  I will first consider the general nature of 2iC and then consider whether it deprives the claims concerned of novelty.  I will initially consider claim 1, then extend my analysis to the remaining claims if this proves necessary.

85.  The 2iC patent relates to a core orientation tool for determining the in situ orientation of a core sample extracted from beneath the surface.  The operation of the 2iC patent is best understood by reference to figures 1 and 2, which are reproduced below.  I have not reproduced figures 3 to 6 as these relate to structural aspects of the core orientation device not important for present purposes.

86.  As can be seen from the figures, the core orientation tool 10 forms part of an inner barrel assembly 11 comprising a core tube 12 and a back end assembly 14.  The core tube receives the core being cut by a core drill, while the back end assembly is attached to the core tube so as to allow for the raising and lowering of the core tube from the core drill.  The core orientation tool forms part of the inner barrel assembly, being connected between the core tube cap 18 and an adapter 16 of the inner barrel assembly as can be seen on figure 1.  There is a known spatial relationship between the core orientation tool and the core tube, thereby allowing in situ core orientation to be determined via the core orientation tool. 

87.  Figure 2 provides more detail on the core orientation tool 10.  This comprises an electronic core orientation system 20 housed within a body 22.  The core orientation system is arranged to log one or more core orientation indications upon receipt of a trigger signal provided by a trigger system 24.  The core orientation system is said to comprise a variety of sensors for sensing different events and the orientation of the core and the drill, such as accelerometers and gyroscopes.  These sensors provide information to the trigger system, which then determines whether to provide a trigger signal.  Other sensors are said to notionally form an orientation module 26 and provide core and/or borehole orientation data.  These may be either idle or continually providing orientation data, however the orientation data is not logged until a trigger signal is provided – I take this to mean that while the orientation sensors may be active, the data provided by these is not logged/recorded for the purposes of determining the core orientation until the trigger signal is provided.  It is noted that some of the trigger system sensors may also be used to provide orientation data. 

88.  The orientation system 20 also comprises a transceiver 28 and antenna 30 to allow for communication with a hand held computer or similar device.

89.  It is apparent that the fundamental operation of the core orientation device 10 involves the logging of orientation measurements in response to a trigger signal provided by the trigger system 24.  A number of different aspects or embodiments provide for a variety of different stimuli leading to the provision of the trigger signal.  For example the detection of a downhole event or downhole events, such as cessation of drilling, can be used to initiate the trigger signal.  In other embodiments the trigger signal may be initiated by the passage of time, while in others it may be initiated on both the passage of time and detection of a downhole event(s).  Further alternatives include: the association of the core orientation indication with the trigger signal, and the provision of multiple trigger signals. 

90.  It is apparent from the discussion above that the 2iC patent discloses many of the features of independent claim 1.  In particular feature 1.1 is apparent from the abstract.  Features 1.2 (e.g. gyroscopes, inclinometers) and 1.3 (e.g. accelerometers, vibration sensors) are apparent from page 12, lines 7 to 24 (e.g. gyroscopes, inclinometers for feature 1.2; accelerometers, vibration sensors for feature 1.3).  The fact that the device is said to be electronic (see the abstract) in conjunction with the relevant passages cited by Professor Tapson (page 28, lines 13 to 16) provides a disclosure of the measurement processor of feature 1.4.  A memory device for storing logged data is disclosed at page 14, lines 23 to 25, thus disclosing feature 1.5.  I consider that feature 1.6 is disclosed at page 20, lines 2 to 6:

“Alternately, the electronic orientation device 20 may be arranged so that upon receiving a trigger signal, it logs the one or more first directional characteristics cyclically for a prescribed period of time, for example every 10 seconds for a 2 minute period.”

91.  Feature 1.7 and most of feature 1.8 are disclosed via the following passages: page 9, lines 14 to 19; page 11, line 30 to page 12, line 5; page 13, lines 4 to 30.  These passages disclose the use of cessation of drilling as a trigger to commence taking orientation measurements, which when read with page 20, lines 2 to 6, lead to the regular taking of orientation measurements in a stationary time period (noting that cessation of drilling is commensurate with “substantially no movement”; see Kleyn at [4], Brown2 at [14], and Tapson2 at [32]) at regular intervals until the expiry of the prescribed two minute time period.  I consider the expiry of the prescribed two minute time period to comprise a trigger event, being the event that triggers the conclusion of logging orientation data.

92.  However I am not satisfied that the 2iC patent discloses all of feature 1.8, in particular the underlined features below:

(1.8) representative of the orientation measurements taken in a stationary time period extending from the time when the movement sensor first recorded a period of substantially no movement until the completion of a trigger event.  (underlining added)

93.  The Opponent has relied upon Professor Tapson’s analysis of the 2iC patent beginning page 10 of JCT-5 to support their contentions of lack of novelty.  I consider it convenient to reproduce below Professor Tapson’s analysis of feature 1.8 from JCT-5:

“This integer requires “stationary measurement set” in integer 1.7 to extend until the completion of a “trigger event”.

The examples of “trigger events” described in Patent Application include, amongst other things, the expiry of a countdown timer and physical event during drilling (p.3.3-6).

The 2iC Patent, in my view, discloses this feature in, for example, the following passage (p. 14.1-5, 30.2-6 (sic 20.2-6))

The sensing of the commencement and cessation of drilling may be via the use of vibration sensors in the module 26. It is known that during drilling as a core bit is bearing against rock, vibrations of known characteristics will be generated. (emphasis added)

the electronic orientation device 20 may be arranged so that upon receiving a trigger signal, it logs the one or more first directional characteristics cyclically for a prescribed period of time, for example every 10 seconds for a 2 minute period. (emphasis added)

Furthermore, the 2iC Patent, at page 9.8-12, discloses to me that the “trigger system” sends triggers (i.e. time based signals, motion based signals or a combination thereof) at multiple points of time during the drilling sequence, including a trigger to complete the orientation measurement period.

The trigger system may trigger the sensors in the module to record one, or combination of readings of orientation at a point/points in time: [including]…

(c) prior to the trigger (emphasis added)

The above passages, and those cited in relation to integer 1.7, reveal to me that the “trigger system 16” referred to in the 2iC Patent incorporates a “time-based” trigger event (i.e the expiry of a countdown timer) for completing the stationary measurement period as required by this integer.

Furthermore, as I observe further below, the “trigger system” referred to in the 2iC Patent incorporates “non-time” based trigger events (i.e “physical events” encountered during drilling) for completing the measurement period as required by this integer.

Therefore, in my view, integer 1.8 of claim 1 of the Patent Application is disclosed in the 2iC Patent.” (all emphasis in original)

94.  There are, however, some difficulties with the above analysis by Professor Tapson.  The first is that the passage cited at page 14, lines 1 to 5 is part of a larger discussion of a particular way of providing a trigger signal starting on page 12, line 30 and ending at page 14, line 5.  On considering this disclosure in total it is apparent that what is being discussed is the initiation of a trigger based on the detection of a sequence of downhole or other events (i.e. the trigger event, if it can be called as such, is a sequence of events, rather than an event as such).  This becomes apparent when the paragraph comprising the passage cited by Professor Tapson is quoted in full (page 13, line 33 to page 14, line 5):

“For example, in addition to simply detecting an uphole motion of the tool 10 or the core tube 12 or core drill itself, the trigger system 24 may be arranged to issue the trigger signal upon the module detecting in sequence commencement of drilling, cessation of drilling and a motion in an uphole direction. The sensing of the commencement and cessation of drilling may be via the use of vibration sensors in the module 26. It is known that during drilling as a core bit is bearing against rock, vibrations of known characteristics will be generated.” (passage cited by Professor Tapson in italics)

95.  The above circumstance appears to describe an embodiment that logs or records the core orientation from a time period beginning after a period of substantially no movement was recorded (nominally commensurate with cessation of drilling).  However it is not entirely clear how or whether the core orientation measurements are logged until the completion of a trigger event.  Rather it would seem that the core orientation measurements are logged after the trigger event has completed, noting that the trigger event in this case is a sequence of events (rather than an event), and that the trigger signal is only provided after detection of this sequence.  In general it would seem that the 2iC patent operates by providing/logging an orientation measurement only after the trigger signal, as is apparent from page 12, lines 12 to 21:

“Some of the sensors and transducers send information to the trigger system that analyses the information to determine when to provide the trigger signal. Other sensors and transducers, notionally forming an orientation module 26, may be either in an idle state or continually providing data indicative of core and/or bore hole orientation, however these sensors and transducers are not activated and/or the orientation data is not logged until the trigger system 24 provides the trigger signal.”

1. It is not clear to me how the further passages cited by Professor Tapson remedy the above defects.  Page 9, lines 8 to 12 reads as follows:

   “In an alternate embodiment, the trigger signal is delivered on multiple occasions during a period between the core orientation tool being inserted into the core drill and a time after the core face orientation device records the orientation of the core face.”

This passage simply indicates that multiple triggers are possible.  For example given the disclosure elsewhere about detection of a downhole event initiating a trigger signal, one could take the above passage to disclose the initiation of trigger signals after each downhole event of a desired group of downhole events.  However it is not clear how, or even why, this passage would apply to an embodiment where a sequence of several downhole or other events is used to initiate a single trigger signal.  In effect the passage at page 9, lines 8 to 12 appears to be incompatible with embodiment disclosed at page 13, line 33 to page 14, line 5.

1. The final passage cited by Professor Tapson is no more helpful.  This is from page 19, lines 25 to 33, and it is instructive to cite the paragraph concerned in full:

   “The trigger system 24 may trigger the sensors in the module 26 to record one, or a combination of readings of orientation at a point/points in time:

   (a) exactly when the trigger occurs;
   (b) after some time delay;

   (c) prior to the trigger by selecting a pre recorded reading where multiple readings are taken at predetermined intervals.”

Applying items (a) or (b) to a trigger based on a sequence of events does not remedy the defects noted above.  With regard to item (c) it is not clear how or even why this passage would apply to an embodiment where a sequence of several downhole or other events are used to initiate a single trigger signal.  While one could take pre-recorded readings before the commencement of drilling, it is not apparent why the skilled addressee would do so given that this would be entirely irrelevant for the purposes of determining the core orientation.  Even if one did so it is not clear that the skilled addressee would necessarily do so in a manner that would ensure that the orientation indication is taken from a stationary measurement set representative of the orientation measurements taken in a stationary time period extending from the time when the movement sensor first recorded a period of substantially no movement (nominally cessation of drilling) until the completion of a trigger event (nominally the sequence of commencement of drilling, cessation of drilling and uphole movement, again noting that this is a disclosure of a sequence of events, rather than an event).

1. I note that Professor Tapson has further addressed this issue in Tapson2 at [70] to [74].  In particular Professor Tapson cites a number of additional passages from the 2iC patent at [71] to support his contentions with regard to feature 1.8.  However none of this escapes the difficulties identified above, in particular those with regard to the different embodiments disclosed and the fact that in general the 2iC patent describes the logging of orientation measurements after the trigger event.

2. A final difficulty with Professor Tapson’s analysis, similar to the difficulties I had with his analysis of the HSSB, is that it seems that Professor Tapson has not properly appreciated the difference between “until a trigger event” and “until the completion of a trigger event”.  This is suggested by Professor Tapson stating that “…the 2iC patent incorporates a “time-based” trigger event (i.e. the expiry of a countdown timer) for completing the stationary measurement period as required by this integer”.  Professor Tapson then makes similar statements in relation to non-time based trigger events for completing the measurement period.  Notably both of these statements merely reference a trigger event with no explanation as to how these disclose the relevant measurement set extending “until the completion of a measurement set”.

3. I note that the 2iC patent discloses further embodiments, notably these comprise: a trigger being provided after each one of certain downhole or other events; the provision of multiple or cyclical triggers after a first trigger or multiple continuous triggers at pre-set time intervals.  However I see no disclosure in the 2iC patent, based on the evidence before me that leads to the anticipation of feature 1.8.

4. It follows from the above that there are no clear and unmistakeable directions for feature 1.8 in the 2iC patent.  It follows that I am not satisfied that claims 2, 4, 5 and 18 lack novelty in view of the 2iC patent.

5. It is at this point that I note that the construction of claim 3 leads me to the unusual situation of determining whether this claim is novel in view of the 2iC patent before I can consider the novelty of claims 6 to 17, noting that claims 6 to 17 append directly or indirectly to claim 3.  Consequently I will now construe claim 3.

6. Introducing the trigger event of claim 3 into claim 1 leads to feature 1.8 reading as follows: “representative of the orientation measurements taken in a stationary time period extending from the time when the movement sensor first recorded a period of substantially no movement until the completion of the expiry of a countdown timer of set duration.”  The wording of feature 1.8 has now become rather curious.  I consider that due to the use of “expiry” in relation to the countdown timer that “completion” has become no more than a tautology: the expiry of a countdown timer would already said to have been completed.  Consequently I consider that claim 3 is requiring no more than the presence of a trigger event which is the expiry of a countdown timer of set duration. 

7. It should now be apparent that claim 3 lacks novelty in view of the discussion of 2iC at paragraphs [90] and [91] above.  I will now consider whether claims 6 to 17 lack novelty in view of the 2iC patent.

8. With regard to claims 6, 7 and 8 I am not satisfied that the 2iC patent discloses the recording of measurements being processed on a first-in, first-out basis (“FIFO”) as defined in these claims.  There is no explicit disclosure of this feature in the 2iC patent, which perhaps explains the absence of discussion of this feature by Professor Tapson in JCT-5.  Somewhat confusingly Professor Tapson refers to JCT-5 at [64] of Tapson1 to support his contention that claims 6 and 7 lack novelty, yet discusses FIFO processing at [72] to [74] of Tapson1 in relation to inventive step, the impression here being that the 2iC patent does not disclose the FIFO feature. 

9. For his part Mr Kleyn challenged Professor Tapson’s conclusions with regard to FIFO processing and the HSSB at [14] of his declaration:

   “The reference in the Icefield tool to it having 32,000 data points (memory limited) does not indicate that there is a FIFO arrangement. To my mind - based on knowledge of similar prior art tools - this simply means that 32,000 orientation measurements can be taken before the tool is no longer able to record any further orientation measurements.”

Mr Kleyn’s point appears to be that the fact that memory is, of its nature, limited, does not necessarily mean that there is a FIFO arrangement in place.  Although it appears odd that Mr Kleyn did not level a similar attack against the 2iC patent, I take it that the same can be said in relation to the memory of the 2iC patent. 

1. Professor Tapson addresses this in reply by asserting, in effect, that FIFO processing is inherent when recording time based measurements in a memory:

   “In response to paragraph 14 (fifth bullet point) of the Kleyn Declaration, the reference in the High Side Seek Brochure to the array of 32,000 data points for storing “orientation shots” at pre-determined intervals indicates to me that each orientation shot is recorded and processed on a first in and first out (FIFO) basis in memory. A time-based system for storing data in an interval array, in my experience, invariably involves recording and processing data on a FIFO basis because, as I have previously explained, time based measurement systems involve memory devices that store and process data on a first-in, first-out basis as each time interval and measurement is taken. Furthermore, I do not agree with Mr Kleyn that FIFO processing requires overwriting memory when memory capacity is full. FIFO, in my experience, is the default processing technique for recording and processing data on a first-come, first-served basis as each time measurement is taken. Overwriting memory when capacity has been reached is separate action which, in my experience, is incorporated in some (but not all) time-based measurement systems which record and process measurements shots as and when each time interval is completed. Mr Kleyn appears to have confused a circular buffer arrangement (when memory is overwritten once full) with FIFO processing. There is no requirement in claim 6 that memory be overwritten once full, which is a separate procedure to the FIFO processing required by this integer.”

2. On considering the above it would seem that Professor Tapson has overlooked some of the claim language used.  Both claims 6 and 7 refer to “…the recording of measurements being processed on a first in, first out basis” (emphasis added).  Consequently the claim language focuses on the first in first out manner in which the measurements are recorded or stored, not on how the measurements are processed.  This plainly suggests that the first measurements being stored in the memory are the first out, i.e. discarded.  This is consistent with the opposed specification at page 8, lines 25 to 31:

   “Steps 208 and 210 are then repeated indefinitely until the vibration sensor 26 records no movement for a predetermined period of time (step 212). However, unlike the first embodiment of the invention, the array portion of memory 30 has a fixed number of elements for storing orientation measurements. In this manner, when the number of measurements obtained from the accelerometer 24 exceeds the fixed number of elements the oldest measurement is discarded each time for the new measurement. Thus, the array is in essence a first in first out (FIFO) list.”

Conversely Professor Tapson has indicated that FIFO refers to a manner of both storing and further processing of the data.  This is apparent in Professor Tapson’s comments with regard to overwriting the memory: “I do not agree with Mr Kleyn that FIFO processing requires overwriting memory when memory capacity is full. FIFO, in my experience, is the default processing technique for recording and processing data on a first-come, first-served basis as each time measurement is taken”.  That is, overwriting of the memory is not an issue with FIFO processing due to the fact that the measurements are continually sent from the memory for processing.  As noted this is a different requirement to what is actually in claims 6 and 7 which focus on the first in first out nature in which measurements are stored. 

1. To the extent that there is any ambiguity in the use of first in first out in claims 6 and 7, I note that this is resolved by recourse to the specification.  It should be apparent that on doing so (see [108] above) this supports my reasoning.

2. It follows from the above that I am not satisfied that claims 6, 7 and 8 lack novelty in view of the 2iC patent.

3. There is no contention by the Opponent that any of claims 9, 10, 11, 12 or 16 are disclosed in the 2iC patent.  I see no reason to consider otherwise. Consequently I am not satisfied that claims 9, 10, 11, 12 and 16 lack novelty in view of the 2iC patent.

4. The Applicant has conceded that if claims 1 and 18 were found to lack novelty, then claims 13 and 14 would also lack novelty (Applicant’s submissions at [65]).  It follows that a similar concession would apply in the event that claim 3 lacked novelty.  The passages cited in JCT-5, pages 20 and 21 clearly disclose the features of claims 13 and 14 (notwithstanding some page numbering errors).  Consequently I am satisfied that claims 13 and 14 lack novelty in view of the 2iC patent.

5. With regard to claim 15, the Opponent has relied upon JCT-5 at page 22 for disclosure of the features of this claim.  It is worth repeating the relevant passages from JCT-5 below:

   “The 2iC Patent, in my view, discloses this feature in, for example, the following passages (p.2.22-25, 30.2-6):

   an electronic orientation system coupled with the core drill, the electronic orientation system configured, upon receiving a trigger signal, to log one or orientation system configured, upon receiving a trigger signal, to log one or more first indications of orientation of the tool.

   the electronic orientation device 20 may be arranged so that upon receiving a trigger signal, it logs the one or more first directional characteristics cyclically for a prescribed period of time, for example every 10 seconds for a 2 minute period

   It is implicit that at the end of the “prescribed period of time” following completion of the trigger event that a routine would be undertaken to shut down the measurement processor. Therefore, in my view, integer 15.1 of claim 15 of the Patent Application is disclosed in the 2iC Patent.”

6. It is not clear to me from this explanation alone as to why the skilled addressee would necessarily understand that a shutdown procedure as per claim 15 is present in the 2iC patent.  I also note that Mr Kleyn disagreed with Professor Tapson at [17] of his declaration:

   “Integer 15.1 (a) - Professor Tapson's implication is not sustainable on the text of the 2IC Patent as the only interpretation. It is to be remembered that the trigger signal only operates to trigger the logging of measurements taken by the measurement processor. The actual operation of the measurement processor is not discussed. Hence on the text provided in the 2IC Patent it is equally open to imply that the measurement processor continues to take measurements following completion of the trigger event, but that none of these measurements are "logged".”

7. Professor Tapson provided further explanation with regard to claim 15 in Tapson2 at [77] and [78]:

   “In my view, most skilled persons reading the passages of the Patent Application at p.2- 22-25, and p.30.2-6 (as set out in p.22 of the Novelty Integer Table) would consider it implicit that measurement processor would be shut down ‘at the end of the prescribed period of time’ following completion of the trigger event. Furthermore, I note that my understanding of this passage of the 2iC Patent is consistent with other parts of the specification which describe the orientation sensors being maintained in a “idle” or “inactive” state at times they are not used (see e.g. p 12. 15-21; p.16.11-20). In any event, it does not make sense in the context of the 2iC Patent read as a whole for the orientation sensors referred to in the 2iC Patent to remain in an active state after completion of the trigger event (such as a count-down period) after which they are not required to take any measurements.

   I accordingly remain of the view that the orientation tool referred to in the 2iC Patent involves a “shut-down procedure” for its measurement components “on completion of the trigger event” in the sense required by this integer. As explained above, this is the logical manner in which a measurement instrument having a trigger system would operate at the Priority Date.” (emphasis in original)

1. It is apparent from this passage that Professor Tapson’s assertions of CGK are based on similar difficulties with regard to the construction of “until the completion of a trigger event” as observed with regard to my discussion of novelty, noting that I have previously determined that the HSSB does not disclose this feature.  It follows that I cannot find feature 1.8 to comprise CGK in view of Professor Tapson’s evidence.

2. Consequently I am not satisfied that claims 1, 2, 4, 5 and 18 lack inventive step in view of the CGK alone.

3. Due the peculiarities in the construction of claim 3, it is now necessary to consider separately claims 3 and 6 to 17.As noted earlier I consider that claim 3 merely requires (in part) no more than the presence of a trigger event which is the expiry of a countdown timer of set duration. 

4. Professor Tapson makes comments on the obviousness of claim 3 at [13] of Tapson2:

   “The decision to select all of the features of claim 1 of the Patent Application (including the feature singled out by Mr Kleyn as being the ‘key’ feature) and to combine them together would have been a routine step for an instrument designer at the Priority Date because these features were basic components of existing core orientation systems. This conclusion applies equally to claim 18 and the dependent claims 2 to 17 of the Patent Application which, considered separately, likewise involve stock features of existing core orientation tools, basic electrical engineering design considerations or the use, as trigger events, of events during core orientation drilling procedures which occur after the stationary measurement period that were well-known and would have been selected and combined as a matter of course.”

5. I note that these statements are rather general in nature, especially with regard to the dependent claims. There is no attempt to consider what the skilled addressee would do in view of the problem to be solved or in view of any problem for that matter. In addition Professor Tapson refers to the features of claims 2 to 17 “…considered separately…” as being CGK.  This leaves substantial doubt as to whether Professor Tapson has properly considered, in the sense of Aktiebolaget Hassle at [119], whether the combination of features of claim 3 is non-inventive rather than just the individual features concerned. In view of all of this it is difficult to avoid the inference that Professor Tapson’s statements are tainted by ex post facto analysis. It follows that I am not satisfied that claims 3 and 6 to 17 lack inventive step in view of the CGK alone.

6. In summary I am not satisfied that claims 1 to 18 lack inventive step in view of the CGK alone.

Lack of Inventive Step in View of Common General Knowledge and Prior Art (s 7(3)

1. This argument is put at [75] to [80] of the Opponent’s written submissions.  At the hearing the Opponent clarified that they abandoned any attack under s7(3) based on the 2iC patent, as suggested at [6(b)] of their written submissions.  Presumably this was due to the fact that the 2iC patent does not form the prior art base for the purposes of section 7(3), by virtue of being published after the priority date of the opposed application. Conversely, the Opponent has relied upon the HSSB both for the purposes of s7(3) in their written submissions and at the hearing.  I will consider the HSSB for the purposes of s7(3) below.

2. Under s7(3) it is necessary for a prior art document to have been ascertained, understood and regarded as relevant by the skilled addressee before it becomes available for the purposes of assessing inventive step.  The Opponent contends (Opponent’s submissions at [77]) and the Applicant concedes (Applicant’s submissions at [75]) that the HSSB would have been ascertained, understood and regarded as relevant by the skilled addressee at the relevant date.  I see no reason to conclude otherwise, so I also accept that this is the case.

Consideration of s7(3) in view of the HSSB

1. As for my discussion under s7(2) above, at [146] and [147], I cannot conclude that feature 1.8 was CGK before the priority date.  It follows that I am not satisfied that claims 1, 2, 4, 5 and 18 lack inventive step in view of the HSSB and the CGK.

2. With regard to claim 3, the Opponent supports their contentions of obviousness via Professor Tapson’s evidence at [51] to [53] of Tapson2.  These passages are repeated below:

   “In October 2007, it would have been very clear to me and to my colleagues in the Field that each of the alternate trigger events – namely ‘subsequent movement’, ‘time’, and ‘attachment of an overshot’ – additionally required by claims 2, 3 and 5 could be readily incorporated as part of the core orientation tool recommended in the HighSide Seeker Brochure. Each of those alternatives is a straightforward replacement for the ‘core break’ trigger referred to in the brochure for completing the stationary period. This is because each of them – like the event of a ‘core break’ - occurs, during standard core orientation drilling operations in October 2007, after the conventional stationary period for measuring core orientation has been completed.

   In this regard, I note that the HighSide Seeker Brochure at page 1 describes “core break” as a non-limiting example of a trigger event. Given the limited number of measurable events that may be used after the stationary measurement period, the alternate events referred to in these integers (namely ‘subsequent movement’, ‘a count-down timer’, and ‘attachment of an overshot’) are the first things to come to mind to me as alterative trigger events that could be readily incorporated in a trigger-based core orientation tool, such as the HighSide Seeker. A typical designer in October 2007 would have readily appreciated that alternate trigger events were necessary as part of the core orientation system disclosed in the brochure to ensure a useful measurement is taken in cases where the “core break” trigger failed. It would not have required any degree of invention to implement, alongside the “core break” trigger, disclosed in the HighSide Seeker Brochure, these alternate events which are invariably encountered following the stationary measurement period during all core orientation operations as at October 2007.

   Accordingly, claims 2, 3 and 5 of the Patent Application do not, in my opinion, involve any advance or inventive step when considered in light of the HighSide Seeker Brochure and the common general knowledge in the Field at the Priority Date.” (emphasis added)

3. Similar to my discussion with regard to s7(2), the analysis has been undertaken after viewing the opposed application and with no reasoning as to what the skilled addressee would do when faced with the problem at hand.  In this regard Professor Tapson’s use of could and would in the cited passages brings into doubt exactly what could be expected of the skilled addressee as opposed to what they would do.  This is an important point given the Act refers to what would be obvious to the skilled addressee, rather than what could be obvious. I also note that it is extremely doubtful (for the reasons given at [78] to [81]) as to whether the HSSB actually teaches the taking of core orientation measurements until a trigger event, let alone until the completion of a trigger event, and this situation brings into question the Opponent’s assertions of obviousness with regard to all the claims. In view of all this I am not satisfied that claims 3 and 6 to 17 lack inventive step in view of the HSSB and the CGK.

4. In summary I am not satisfied that claims 1 to 18 lack inventive step in view of the HSSB when considered with the CGK.

Inventive Step – Conclusion

1. I am not satisfied that any of claims 1 to 18 lack inventive step in view of the CGK alone or in view of the HSSB when considered with the CGK.  This ground of opposition is unsuccessful.

Utility

1. Section 18(1)(c) of the Act requires that for an invention to be patentable it must be useful.  This requirement was expressed in the following manner at [141] of Ranbaxy Australia Pty Ltd (CAN 110 781 826) v Warner-Lambert Company LLC FCAFC 82 (“Ranbaxy”):

   “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).”

2. Further guidance on utility has been conveniently summarised at [117] of Inverness Medical Switzerland GmbH v MDS Diagnostics Pty Limited [2010] FCA 108 (“Inverness”):

   “A principle has been expressed that all within the scope of a claim must be useful if the claim is not to fail for want of utility, so that a claim is bad if it covers something that will not produce the desired result, even if a skilled person would know which means to avoid it (WM Wrigley Jr Co v Cadbury Schweppes Pty Ltd [2005] FCA 1035; (2006) 66 IPR 298 at [138] per Heerey J and authorities there cited). This was the test applied by the primary judge in Lundbeck and the parties did not dispute this test in the appeal in that case (Lundbeck at [217]). However, this principle does not mean that a specification should be construed in a way that any sensible person would appreciate would lead to unworkability when by construction it could be given a more limited meaning(Welch Perrin at 602 per Menzies J). The claims should be construed as they would be by the person skilled in the art desirous of making use of the invention (Martin Engineering Co v Trison Holdings Pty Ltd (1989) 14 IPR 330 at 338 per Burchett J; see also Austal Ships Pty Ltd v Stena Rederi Aktiebolag [2005] FCA 805; (2006) 66 IPR 420 at [227]- [239]). It has also been said that a claim does not need to specify a limitation that was common knowledge in the art for that limitation to apply in construing a claim to avoid want of utility (Austal Ships at [236] per Bennett J, citing Washex Machinery Corporation v Roy Burton & Co Pty Ltd (1974) 49 ALJR 12 at 18 per Stephen J). In Lundbeck (at [217]), Bennett J, with whom Middleton J agreed, affirmed the test as set out in Ranbaxy and Austal Ships.”

3. The Opponent’s contends that the claimed invention lacks utility at [81] to [90] of their written submissions.  In particular at [85] the Opponent asserts that:

   “The Application promises that the invention described and claimed in the Application will provide ‘a less labour intensive core orientation measurement system’ (p.2 lines 15 to 17). The invention described and claimed does not fulfill (sic) this promise. The core orientation system disclosed in the Application is at least as labour intensive as other electronic core orientation tools available in October 2007, including the Ace Core Tool.”

4. This line of reasoning is based on Tapson1 at [92]:

   “The Patent Application at page 2 lines 15 to 17 asserts that an object of the invention is to provide a "less labour intensive core orientation measurement system that is able to provide at least one substantially accurate indication of core orientation prior to retrieval". I do not agree that the claimed invention meets that objective, as the core orientation system disclosed in the Patent Application appears to me to be at least as labour intensive as other electronic core orientation tools available in October 2007, including the Applicant's Ace Core Tool. Further, I consider that the claimed invention is likely to produce inaccurate orientation readings given that it does not include any method or feature to account for inadvertent stationary periods encountered during the drilling sequence.”

Similar statements are made at [90] of Tapson2.

1. The Applicant responded to this at [81] and [82] of their written submissions:

   “The Opponent submits that the claims lack utility as the invention described and claimed in the Application sets as its object the provision of a “less labour intensive core orientation measurement system”. This is incorrect as the wording referenced by the Applicant clearly references this requirement as being “an object” rather than “the object”.

   As indicated in the Opponent’s submissions, the specification should be construed in a way that any sensible person would appreciate and not in a manner that would lead to an unworkable construction when it could be given a more limited meaning. It is believed that this is the case here in that the reference to the tool being “less labour intensive” is clearly a reference to the amount of labour required of the driller to record core orientation during the time the system is in the borehole. The reduction in labour being a direct reference to the elimination of the requirement for the driller to monitor a separate timing device against which core orientation measurements can be cross-referenced (page 1 line 25 through page 2, line 14).”

2. The Applicant’s comments at [81] of their written submissions appear to be denying that the promise of the invention is to provide “a less labour intensive core orientation measurement system” as asserted by the Opponent.  On considering the opposed application, especially at pages 1 to 2, it is difficult to avoid the conclusion that the promise of the invention clearly relates to providing “a less labour intensive core orientation measurement system”, and to that extent I agree with the Opponent and disagree with the Applicant. 

3. However the Applicant’s statements at [82] illustrate a fundamental flaw in the Opponent’s arguments and in the evidence upon which these are based.  In essence the promise of the invention is not to produce ‘a less labour intensive core orientation measurement system’ in an open ended sense but rather with respect to the known electronic core orientation systems as discussed at page 1, line 22 to page 2, line 14 of the opposed application.  In particular these systems are discussed as requiring:

   “…a reliance on the operator to determine when the core is at a position where a true core orientation determination has taken place. The operator must then also extract this true orientation measurement from the myriad of orientation measurements taken by the electronic core orientation measurement system. Thus while not as labour intensive as the manual systems mentioned above, current electronic core orientation” (opposed application at page 2, lines 8 to 11)

4. Consequently it is clear that the promise of the invention relates to providing ‘a less labour intensive core orientation measurement system with respect to the issues discussed with regard to the known electronic core orientation systems at pages 1 to 2 of the opposed application.  The particular issues concerned are those discussed at page 2, lines 8 to 11 of the opposed application.  Consequently the fact that the invention as claimed may or may not be as labour intensive as the Ace Core Tool is not relevant for the purposes of establishing utility.  I do note that the Opponent and Professor Tapson has referred to “other electronic core orientation tools available”, however this still represents a failure to engage with the actual promise of the invention as outlined in the opposed application; if the “other electronic core orientation tools available” include those discussed in the opposed application, then the Opponent has simply failed to provide evidence, beyond mere unreasoned assertions by Professor Tapson, that demonstrates how the claimed invention does not meet the promise indicated.

5. Similarly the Opponent’s further arguments at [86] to [88] of their written submissions extend from erroneous assumptions as to the promise of the invention. It follows that I reject these arguments as well.

6. A final argument with respect to utility is put by the Opponent at [89] of their written submissions, these being based on the last sentence from [92], of Tapson1:

   “Moreover, the invention as described and claimed in the Application is likely to produce inaccurate orientation readings because it does not include any method or feature to account for inadvertent stationary periods encountered during the drilling sequence. A claim is bad if it covers something that will not produce the desired result.” (references removed)

7. However I do not consider that the fact that “a claim is bad if it covers something that will not produce the desired result” formally requires an application to account for all manner of speculative anomalies that could prevent the claimed invention from operating as intended.   To suggest otherwise is tantamount to a requirement that a claimed invention work perfectly under all and any envisaged circumstances, such that no potential anomalies are possible.  This is clearly an absurd result.  The exception, of course, is where the promised benefit particularly relates to overcoming one or more of the anomalies in question, however that is not the case here.  Consequently I reject this line of argument by the Opponent.

8. In summary I am not satisfied that any of the claims fail for want of utility.

Full Description (Sufficiency)

1. Section 40(2)(a) of the Act requires that a specification describe the invention fully.  The High Court in Kimberly-Clark Australia Pty. Ltd. v Arico Trading International Pty. Ltd. [2001] HCA 8 at [25] (“Kimberly-Clark”) expressed the test for full description as:

   “…will the disclosure enable the addressee of the specification to produce something within each claim without new inventions or additions or prolonged study of matters presenting initial difficulty?”

2. The Opponent alleges that the claims are not fully described at [91] to [92] of their written submissions.  In particular at [92]  the Opponent asserts that:

   “The Application is insufficient because there is inadequate teaching to the skilled person as to how to achieve ‘at least one substantially accurate indication of core orientation prior to retrieval of the core.’ The invention as described and claimed in the Application is likely to produce inaccurate orientation readings because it does not include any method or feature to account for inadvertent stationary periods encountered during the drilling sequence. A method or feature to account for inadvertent stationary periods is not part of the common general knowledge.”

3. The Applicant responded to this at [89] of their written submissions:

   “The Opponent’s argument for lack of sufficiency is spurious as lack of sufficiency is directed to the situation of can the person skilled in the art make the invention as claimed. It does not go so far as to require the person skilled in the art to improve upon the device to take into account potentially anomalous operational issues. Accordingly, for the reasons stated above as relate to utility, the Applicant submits that the claims of the Application do not lack for sufficiency of description.”

4. Ultimately I agree with the Applicant.  It is apparent that the full description requirement does not require an application to account for any or all potential anomalies that may impact on the working of the invention.  Similar to my reasoning with regard to utility, if I accepted the Opponent’s arguments this would lead to an absurd result.  The exception, of course, is where the nature of the claimed invention particularly relates to overcoming one or more of the anomalies in question, however that is not the case here.  Consequently I reject this line of argument by the Opponent.

5. In summary I am not satisfied that the specification fails for want of full description.

Conclusion

1. The Opposition is successful.  Claims 3, 13, 14 and 17 lack novelty in view of the 2iC patent.  No other grounds of Opposition were successful. 

1. The deficiency with respect to novelty can be overcome by amendment.  I therefore allow the Applicant two months from the date of this decision to propose amendments that overcome this ground of opposition.

Costs

1. Costs usually follow the event. Despite various submissions by the parties as to the award of costs, I see no reason to do otherwise here. I award costs according to Schedule 8 of the Patents Regulations 1991 against the Applicant, Borecam Asia Pte Ltd.

Dr W.E. Guinea
Delegate of the Commissioner of Patents