Reflex Instruments Asia Pacific Pty Ltd v Minnovare Pty Ltd

[2018] APO 71

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Reflex Instruments Asia Pacific Pty Ltd v Minnovare Pty Ltd [2018] APO 71

Patent Application:                2013203365

Title:Apparatus for aligning drilling machines

Patentee:  Minnovare Pty Ltd

Opponent:  Reflex Instruments Asia Pacific Pty Ltd

Delegate:  Dr N. R. Madsen

Decision Date:  22 October 2018

Hearing Date:  13 August 2018 in Canberra

Catchwords:  PATENTS – apparatus for orientation of a drilling rod before drilling using a gyroscope – section 59 – opposition to grant of a patent – grounds of novelty and inventive step – claims are novel – claims are not inventive – opposition successful – opportunity to amend – submissions sought regarding costs

Representation:  Counsel for the patentee:  Tom Cordiner

Patent attorney for the patentee: Gus Lightowlers of Minter Ellison

Counsel for the opponent: Phoebe Arcus assisted by Edward Thompson of Gilbert and Tobin Lawyers

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application:                2013203365

Title:Apparatus for aligning drilling machines

Patentee:  Minnovare Pty Ltd

Date of Decision:                   22 October 2018

DECISION

The opposition is successful. The claims are novel but lack an inventive step.  

I allow the patentee two (2) months from the date of this decision to propose amendments to overcome the deficiencies.  In the absence of a suitable amendment, and subject to appeal, I direct the application be refused.

I allow the parties fourteen (14) days from the date of this decision to provide written submissions on costs.

REASONS FOR DECISION

Background

1. This matter relates to patent application 2013203365 in the name of Minnovare Pty Ltd (the applicant), filed on 20 February 2013.  The application claims priority from Australian provisional applications 2012900668 and 2012902786 with respective filing dates of 22 February 2012 and 29 June 2012.

1. The request for examination was filed on 10 April 2013. As a consequence, substantive amendments to the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 that came into effect on 15 April 2013 do not apply to the present patent application. This includes the addition of section 60(3A) that allows the Commissioner to refuse a patent applicant if satisfied on the balance of probabilities that a ground of opposition exists.  As it stands, in order to refuse an application I must be "clearly satisfied that the patent, if granted, would not be valid" (F. Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283).

1. The patent was examined and advertised as accepted on 2 July 2015.  Following this, a notice of opposition was filed on 1 October 2015 by Reflex Instruments Asia Pacific Pty Ltd (the opponent). 

1. At the hearing, only grounds of novelty and inventive step were pressed in view of a series of documents.  At the hearing, the opponent presented some reasonably detailed written submissions.  At the request of the applicant, I provided them an opportunity to take a brief amount of time and address these.  The applicant filed such supplementary submissions on 15 August 2018.  Both parties also filed some further comments after this date, however I need not address these as there is nothing in these comments that affects my decision.

The evidence

1. A proportion of evidence in the present matter was filed outside of the statutory periods for filing evidence in support, answer and reply, and at the time of the hearing, was yet to be incorporated into the proceedings in accordance with regulation 5.23.  Regulation 5.23 reads as follows:

   (1)  For the purposes of deciding an opposition, the Commissioner may consult a document that:

(a)  is relevant to the opposition; and

(b)  has not been filed under this Chapter; and

(c)  is available in the Patent Office.

(2)  If the Commissioner proposes to rely on the document, the Commissioner must give the parties:

(a)  notice of the Commissioner's intention to do so; and

(b)  a copy of, or access to, the document; and

(c)  an opportunity to give evidence or make representations about the document.

1. Evidence in this matter includes the following declarations:

Evidence in Support

·Jonathan Craig Tapson dated 23 March 2016 (Tapson 1) with exhibits JCT-1 to JCT-11

·Kevin Laurence Brown dated 24 March 2016 (Brown 1) with exhibit KLB-1

Evidence in Answer

·Michael Charles Ayris dated 28 June 2016 (Ayris)

·Thomas Callum McCracken dated 28 June 2016 (McCracken) with exhibits CM-1 to CM-2

Evidence in Reply

·Jonathan Craig Tapson dated 5 September 2016 (Tapson 2) with exhibit JCT-12

·Kevin Laurence Brown dated 5 September 2016 (Brown 2)

1. On 11 July 2018, the opponent sought to incorporate the following declarations filed in respect of an opposition to related innovation patent 2012101210 into the present opposition by way of regulation 5.23:

• Jonathan Craig Tapson dated 11 June 2018 (Tapson 3) with exhibits JCT-13 to JCT-25
• Kevin Laurence Brown dated 12 June 2018 (Brown 3) with exhibit KLB-2

1. Shortly after the filing of Tapson 3 and Brown 3, a delegate of the Commissioner declined to make determination as to their relevance under regulation 5.23, and deferred consideration to myself as the hearing delegate.  I also note that the opponent indicated at the hearing that they did not require Brown 3 to form part of the present opposition.

1. For completeness, the opponent also filed a request to amend the statement of grounds and particulars at the time of Tapson 3 and Brown 3.  However, in light of the case put forward by the opponent at the hearing, this amendment was redundant and is hereby refused.

10.  Responsive to the new evidence filed by the opponent, the applicant further sought to rely upon declarations from Jordan O’Reilly and Brenton Armitage, these declarations being also filed in a related matter for innovation patent 2012101210.  These declarations in response are:

·     Jordan Christopher O’Reilly dated 6 August 2018 (O’Reilly)

·     Brenton James Armitage dated 6 August 2018 (Armitage) with exhibits BJA-1 to BJA-4

11.  To the extent that any of the additional evidence me before is suitable for consideration under regulation 5.23, I aimed to consider whether such evidence satisfied regulation 5.23 in formulating my decision.  While some of this evidence was particularly relevant/useful to the decision at hand, and I consider such material satisfies regulation 5.23, no opportunity was required for either party to file responsive evidence or make of further representations as I consider that this, to the extent necessary, was done prior to and at the hearing.  For example, where Tapson 3 has been referred to in this decision in respect of substantially significant evidence, the applicant has taken opportunity to respond via O’Reilly and/or Armitage.

12.  I further note that the late filing of various declarations appears to be, at least in part, due to amendment of the claims during prosecution of the present opposition.  This amendment was finally allowed on 7 March 2017.

The Specification

11.  While the rules of construction for an Australian patent specification are well summarized in Decor Corp v Dart Industries 13 IPR 385, the correct application of these rules to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70; 81 IPR 228 at [118] – [120]:

"the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear ... while the claims define the monopoly claimed in the words of the patentee's choosing, the specification should be read as a whole ... it is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification ... terms in the claim which are unclear may be defined or clarified by reference to the body of the specification."

1. I also note that the requirement that the claims are clear is understood to be satisfied if a person could ascertain "whether or not what he proposes to do falls within the ambit of the claim" (Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59).

2. The invention described in the specification relates to the field of aligning drills for mining applications.  The specification discusses that alignment of a drill rod is of critical importance, particularly before a hole is drilled.  This helps to ensure correct blasting patterns can be generated, cable bolts for securing the rock face can be correctly positioned, and inaccuracies in drilling to significant depths of the order of kilometres are minimised.  An important measurement for alignment of drilling equipment is the measurement of north, whether that is magnetic north or true north. 

3. Various alignment methodologies exist in the art including the use of a compass, surveying techniques, and GPS survey instruments.  Measurements using a compass can be affected by the magnetic nature of equipment or the ore body being worked upon, while surveying techniques can be laborious and difficult.  GPS surveys are also limited in that they require satellite vision and have associated risks of error.  The present invention attempts to improve upon these techniques by providing an alternative method and apparatus for alignment of a drill prior to drilling.

4. Figure 1, being the only figure in the specification, depicts the invention in the form of an apparatus.

5. Relevant paragraphs include [0013], [0019] and [0023] of the specification which respectively state:

   Figure 1, shows an aligning apparatus 10 in accordance with the present invention. The aligning apparatus 10 comprises a casing 12 attached to which is a mounting means 14. Arranged with in the casing 12 is at least one mutually orthogonal fibre optic gyroscope (FOG).  The aligning apparatus 10 preferably further comprises at least one set of mutually orthogonally accelerometers.  The aligning apparatus 10 may further comprise other electronic measuring devices such as to determine relative magnetic field strength and control electronics with the ability to perform pulse modulation on the laser used within the FOG.

   In accordance with yet another preferred embodiment of the present invention, the aligning apparatus 10 may further comprise a connection to a display device 18 which is remote to the aligning apparatus 10, with relevant information being displayed on a screen 16. The screen 16 may be configured to display information such as alignment (azimuth) and angle (pitch) of the aligning apparatus 10.  The display device 18 may be a handheld device or may be incorporated or integrated into the dash board of a vehicle to which the drilling equipment is mounted.

   Once the alignment apparatus 10 has completed its calibration and POST sequence it will display on the display device 18 the relative bearing that the device is currently on. The operator of the system will then be able to position the alignment apparatus 10 so that the mounting means 14 engage the drilling collar rod. The FOG and accelerometers of the alignment apparatus 10 captures the movement of the alignment apparatus 10 so that relative bearing of the alignment apparatus 10 to true north is constantly calculated.

The claims

17.  The specification ends, as amended by request on 2 November 2016, in 17 claims with claim 1 being independent.

1. A drilling machinery orientation apparatus comprising an orientation device and a display device, the orientation device comprising mounting means that enable the orientation device to be mounted onto an external surface of a drill rod of a drilling machine, at least one gyroscope and control electronics for measuring an initial orientation of the drilling machine with respect to true north, the orientation device being communicable with the display device for displaying directional information to an operator, wherein the directional information provides means for axially orientating the drill rod of the drilling machine with a predetermined longitudinal axis of a proposed bore hole, and wherein the display device displays the orientation and angle of the orientation device.

1. It is useful to directly consider the scope of this claim.  A drilling machinery orientation apparatus is claimed having:

·     An orientation device that:

o   Comprises a mounting means that enable it to be mounted to an external surface of a drill rod of a drilling machine

o   Comprises a gyroscope and control electronics suitable for measuring an initial orientation of the drilling machine with respect to true north

o   Is communicable with a display device

·     A display device that:

o   Is communicable with an orientation device

o   Is suitable for displaying directional information to an operator, wherein the directional information provides a means for orienting the drill rod prior to drilling.  This feature is considered to limit the claim to a temporal provision of directional information such that capability is provided to use this information to align a drilling rod with a predetermined axis of a proposed bore hole.  This equates to a measurement/presence of relevant data prior to beginning the drilling of a bore hole.

o   Displays the orientation and angle of the orientation device.  In this regard the claim is limited to an act of displaying data about the directionality of the orientation device.  This may be before or after drilling has started, i.e. this feature has no temporal limitation.

Novelty

19.  For the purposes subsection 7(1) of the Patents Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any one of the prior art information.

20.  It is well established that the general test for anticipation is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20]; [1977] HCA 19; 137 CLR 228 at [235]:

“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement.”

21.  This test is satisfied if the alleged anticipation discloses all of the essential features of the invention as claimed (Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40 at [19]; [1990] FCA 40; 16 IPR 545 at [549]). To meet this requirement, the prior art must contain “clear and unmistakable directions to do what the patentee claims to have invented” (The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 at [486]). As per the General Tire case: “A signpost, however clear, upon the road to the patentee’s invention will not suffice.  The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee”.

22.  I also note that an alleged anticipation need not explicitly disclose all of the essential features of the claimed invention. In this regard, a disclosure may be implicit as discussed in Bristol-Myers Squibb Company v FH Faulding & Co Ltd [2000] FCA 316; 46 IPR 553 at 576:

“What all authorities contemplate, in our view, is that a prior publication, if it is to destroy novelty, must give a direction or make a recommendation or suggestion which will result, if the skilled reader follows it, in the claimed invention. A direction, recommendation or suggestion may often, of course, be implicit in what is described and commonly the only question may be whether the publication describes with sufficient clarity the claimed invention or, in the case of a combination, each integer of it.”

Wright et al. (United States Patent Application US 2005/0155794 A1)

23.  Wright describes a method and apparatus for determining an orientation of a drilling tool of a drilling system configured to drill a borehole into the earth’s surface.  The document is largely focussed upon the concept of measurement while drilling (MWD).  Measurement while drilling is useful in directional drilling scenarios, particularly for offshore drilling, where boreholes are drilled in various directions from the common region of a centrally positioned drilling platform.  In surveying the direction of a drilling tool while drilling a MWD survey tool is included as a component of a drilling assembly, and measurements are made without removing the drilling assembly from the borehole.  It is noted in Wright at paragraph [0008] that survey measurements are typically taken during periods where additional drill pipes are connected to the drill string. 

24.  Figures 1A and 1B are useful depictions of the described invention.  Relevantly, paragraph [0024] states that:

FIGS. 1A and 1B schematically illustrate MWD drilling system 10 compatible with embodiments described herein extending below the surface 12 along a borehole 14.  The drilling system 10 comprises a drill string 15 and a drilling tool 20 comprising a drill bit 22 and a MWD survey tool 24.  While the MWD survey tool 24 is shown in FIG. 1B as being adjacent to the drill bit 22, in other embodiments, the MWD survey tool 24 is spaced away from the drill bit 22.  In certain such embodiments, a length of drill string 15 can be interposed between the MWD survey tool 24 and the other components of the drilling tool 20.  Drilling systems 10 compatible with embodiments described herein are commonly known in the industry.

25.  Paragraph [0028] of Wright makes it clear that the MWD survey tool 24 comprises a gyroscopic sensor which measures the orientation of the tool 24, and thereby the drilling string/rod, with respect to true north.  Control electronics and a remote display are also disclosed ([0031]).  The display may comprise standard communication components, for displaying and or recording operating parameters, drilling tool orientation and/or location coordinates, or other information from a system controller ([0032]).  The system controller uses data signals from the survey tool sensor to calculate the orientation and/or position of the drilling tool ([0035]).  Furthermore, communication between the survey tool and system controller may be facilitated by a modem ([0039]).  Accelerometers are also provided to measure the inclination of the survey tool with respect to the vertical direction ([0041]).

26.  The MWD survey system operates at a plurality of resolution levels.  For instance, at a first distance from the surface a first resolution may be used, and at a second further distance from the surface, a second higher resolution may be used.  Paragraph [0045] also makes mention that:

Measurements using the MWD survey system 30 can begin when the drilling tool 20 is above the surface 12 prior to drilling.  In such embodiments, the measurements above the surface 12 can be performed at the first resolution level.  Once drilling has proceeded to between approximately 30 to approximately 90 feet below the surface 12, additional measurements at the first resolution level can be made.

27.  It is clear that Wright discloses an orientation device communicable with a display device having a gyroscope and control electronics suitable for measuring true north.  The survey tool also measures the angle of inclination.  The display device is suitable for displaying directional information to an operator in the form of operational parameters and drilling tool orientation.  I thus consider there to be clear direction to displaying orientation with respect to true north, and angle of inclination, on the display. 

28.  The applicant argued that Wright does not disclose a drilling machinery orientation apparatus.  They argue that the term “drilling machinery orientation apparatus” should be construed to mean an apparatus for orientating a drill rig.  They point out that Wright describes a MWD device that provides a method of correcting data resolution in a MWD, which locates a drill rod once drilling has begun.

29.  I see nothing in the claim that is limiting to a drill rig.  Non-specific drilling machinery is present in claim 1, wherein data measured must be suitable for a determination of a relative direction of a drilling rod.  MWD devices described in Wright clearly provide an indication of the direction of the drilling rod near the drilling head.  I consider it clear that Wright discloses a drilling machinery orientation apparatus. 

30.  As per the above reference to paragraph [0045], Wright discloses that measurements can begin prior to drilling.  The relevant feature whereby directional information provides means for axially orienting the drill rod of a drilling machine with a predetermined longitudinal axis of a proposed bore hole, has been construed earlier in this decision to amount to the measurement/presence of relevant data prior to the beginning of drilling a bore hole. 

31. The applicant raises a number of points in suggesting that this feature is not disclosed. Firstly, they suggest that it is not evident on the face of Wright what is being displayed to the operator in the relevant part of paragraph [0045]. On this I note that the claim does not appear in any way limited to the actual provision of data on a display as the “means” for aligning. As I discussed when considering the construction of claim 1, providing a means for alignment amounts to nothing more than the mere presence of data before drilling. The data does not need to be displayed.

32.  Secondly, the applicant argues that even if the MWD device at the surface includes orientation information, it is not suitable for the purpose defined in claim 1.  On this point, I note that there is no particular limitation in the claim that defines any manner of physically moving the drilling machinery to create alignment.  All that the claim requires is the presence of suitable information that can be used for alignment.  Whether or not alignment of the machinery in Wright is difficult or expensive prior to drilling is irrelevant.  In short, if information that adequately suggests an alignment of a drilling machine and drilling rod is present prior to any drilling, then it is inevitably suitable as providing a means for alignment before drilling.

33.  Finally, the applicantargues that there is no clear and unmistakable direction to the MWD device being on the drilling machinery prior to drilling.  I do not consider this to be the case.  As per paragraph [0045], measurements using the MWD survey system can begin when the drilling tool is above the surface.  In the context of the manner in which the invention is described in figure 1B and paragraph [0045], the MWD survey tool is necessarily present on the drilling tool/machinery at that point in time.

34.  Therefore, the feature of measurement/presence of relevant data prior to the beginning of drilling a bore hole is accordingly disclosed.  The remaining key feature in dispute is that the orientation device comprises mounting means that enable it to be mounted to an external surface of a drill rod of a drilling machine.  The opponent points to this feature being disclosed in paragraph [0024] repeated below.

FIGS. 1A and 1B schematically illustrate MWD drilling system 10 compatible with embodiments described herein extending below the surface 12 along a borehole 14.  The drilling system 10 comprises a drill string 15 and a drilling tool 20 comprising a drill bit 22 and a MWD survey tool 24.  While the MWD survey tool 24 is shown in FIG. 1B as being adjacent to the drill bit 22, in other embodiments, the MWD survey tool 24 is spaced away from the drill bit 22.  In certain such embodiments, a length of drill string 15 can be interposed between the MWD survey tool 24 and the other components of the drilling tool 20.  Drilling systems 10 compatible with embodiments described herein are commonly known in the industry.

35.  The opponent argues that the above text, in combination with figure 1B, clearly teaches that the survey tool can be mounted to the external surface of the drill rod, specifically between two sections of the drilling string (between two rods) or between the drill bit and a drill rod.  In order to achieve this, the opponent suggests that the survey tool must logically be attached to an external surface of the drill rod and thereby mounted to the drilling machine.  The opponent further refers to evidence of Professor Tapson which reiterate this point (Tapson 2 at [38], Tapson 3 at [36]).  Responsive to Professor Tapson’s evidence, evidence from the applicant’s expert, Mr Armitage, suggests at [5.35] that the MWD survey device is inside the drill rod.  Mr Armitage notes that attaching to the external surface of a drill rod would be problematic as the drill rod must be smooth to allow for effective tunnelling[1]. 

[1] I consider the referenced parts of Tapson 3 and Armitage suitable documents for consideration in accordance with regulation 5.23. Armitage at [5.35] is directly responsive to Tapson 3 at [36]. No further comments from the parties are required. Similar applies to further instances of use of Tapson 3 and Armitage in this decision.

36.  I can accept that an external surface of a drilling rod need not simply be the smooth external surface of the cylindrical rod.  An “external” surface is simply a surface that is not “internal”.  Therefore, a male type thread by which a drilling rod may couple to a subsequent rod via a complementary female thread may be considered an external surface.  Similar may be said of an end surface of a drill rod.  Regardless, there is insufficient teaching in Wright to suggest how the survey tool is attached and held within the drilling machinery, whether that is between drilling rods of a string of rods, or between a rod and the drilling bit.  There is no described structure of mounting means forming part of an orientation device that facilitates mounting onto an external surface of a drilling rod.  With respect to Wright, the manner of mounting is simply left to the person skilled in the art to determine.

37.  Therefore claim 1 is novel in view of Wright.  It follows that claims 2-17 are also novel.

38.  No other documents are pressed for novelty of the present claims.  Therefore, all claims are found novel.

Inventive Step

39.  The test for obviousness was provided by Justice Aicken in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12 at [45]; 148 CLR 262 at 286 as follows:

“The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.”

40.  The High Court in Aktiebolaget Hässle v Alphapharm Pty Ltd [2002] HCA 59 at [51]- [53]; [2002] HCA 59; 212 CLR 411 at [51]- [53] approved this approach, in addition to that taken in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157 at 187 in which Graham J had posed the question:

“Would the notional research group at the relevant date in all the circumstances directly be led as a matter of course to try [the claimed invention] in the expectation that it might well produce a useful [desired result]?”

41.  The usual approach to determining inventive step is the problem-solution approach. Once the problem has been formulated and the common general knowledge and the prior art base has been determined, the question of whether the claimed solution is obvious must be addressed.

42.  In determining the problem or ‘starting point’ for considering inventive step, I am mindful of the words of the majority of the Full Court in AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99 at [202]- [203] as follows:

“If the problem addressed by a patent specification is itself common general knowledge, or if knowledge of the problem is s 7(3) information, then such knowledge or information will be attributed to the hypothetical person skilled in the art for the purpose of assessing obviousness. But if the problem cannot be attributed to the hypothetical person skilled in the art in either of these ways then it is not permissible to attribute a knowledge of the problem on the basis of the inventor’s “starting point” such as might be gleaned from a reading of the complete specification as a whole.”

43.  In other words, the Full Court has stated that when formulating the problem it is not permissible to incorporate information that is not available to the person skilled in the art as either common general knowledge or information available under section 7(3).

The Problem

44.  As discussed earlier in this decision, the background to the invention in the specification outlines a range of problems in the art relating to the initial alignment of a drill collar.  Imprecise alignment leads to issues in situations that require accuracy.  Present methods of alignment can be imprecise, difficult, or limited in their application.  The present invention attempts to overcome at least in part, some of the disadvantages of prior art devices and methods.

45.  It is clear to me that claim 1 does not in any particular way, provide a device that necessarily improves accuracy of alignment.  However it does appear to provide a device that overcomes problems associated with: GPS measurement systems that lose vision of satellites; compass measurements that are affected by magnetic fields; and manual survey based techniques which can be laborious.  To me, the problem the claimed invention seeks to solve is to provide a device that is useful for initial alignment of drilling machines regardless of satellite vision and regardless of the presence of local magnetic effects.

Person Skilled in the Art and Common General Knowledge

46.  In KD Kanopy Australasia Pty Ltd v Insta Image Pty Ltd (2007) FCA 481; 71 IPR 615 Kiefel J identified the skilled addressee as:

“...a person acquainted with the surrounding circumstances of the state of the art and manufacture at the relevant time ... They are likely to have a practical interest in the subject matter of the invention ... and may often work in the art with which the invention is connected.”

47.  Both parties made submissions as to the suitability of particular experts to be considered persons skilled in the art in the present matter.  Clearly, from discussion of the specification above, the invention relates to the alignment of drilling machines and drill rods in particular.  The claimed invention seeks to solve problems in regard to initial alignment of drilling machine with a desired path.  Therefore, the notionally constructed person forming the person skilled in the art may be one that works in fields such as: in-field alignment of drilling machines and drilling rods; designing, developing and constructing instrumentation for mining applications, ideally for aligning drilling machines and rods; and potentially even sale and supply of such devices. 

48.  The present matter includes evidence from six different experts: Professor Tapson, Mr Brown, Mr Ayris, Mr McCracken, Mr O’Reilly and Mr Armitage.  A brief summary of the background of each of these experts is as follows:

·     Jonathan Craig Tapson: Professor Tapson is an electrical and electronic engineer and a professor of Electrical and Electronic Engineering at Western Sydney University where he has been employed since June 2011 (Tapson 1 at [1] and [8]).  In 1995, he was a director of the Centre for Instrument Research at Cape Peninsular University of Technology in South Africa, where he was involved in research projects in the field of orientation and mining instrumentation (Tapson 1 at [9]).  While not appearing to have worked specifically on alignment devices and techniques for drilling rods, I consider that his experience makes him qualified to provide useful evidence in the present matter. 

·     Kevin Laurence Brown: Mr Brown has over 20 years’ experience in mining exploration drilling and has been employed as a senior driller (Brown 1 at [3]-[5]).  Between 1995 and 2003 he indicates that he has carried out or overseen over 90000 metres of drilling operations before becoming a technical sales representative for Ace Drilling Supplies in 2004 (Brown 1 at [7]-[9]).  He commenced a role in 2007 at Reflex Instruments as Global Product Manager where he works with the technical team on design, operating requirements and prototypes of drill rig alignment instruments, and he has significant experience operating such systems (Brown 1 at [11 and [17]).

·     Michael Charles Ayris: Mr Ayris has worked in the field of directional surveying and drilling for over 30 years, and is currently the managing director of DHS (Aust) Pty Ltd (Ayris at [1] and [3]).   He founded business carried on by DHS, which develops and supplies precision directional surveying equipment in civil engineering, mining and exploration industries (Ayris at [6]).    He was responsible for developing a product known as the Azimuth Aligner on behalf of the patentee, this product being a commercial embodiment of the claimed invention (Ayris at [7]-[8]).   

·     Thomas Callum McCracken: Mr McCracken is the managing director of the applicant, and is a mechanical engineer with over nine years’ experience in the mining and resources industry (McCracken at [1] and [3]).  He was principally responsible for managing the development of the Azimuth Aligner and has worked as a downhole surveyor for DHS (Aust) Pty Ltd (McCracken at [5]-[6]).

·     Jordan Christopher O’Reilly: Mr O’Reilly was a director of Precision Alignment Equipment, a company that provides surveying services to the mining industry, between 11 March 2016 and 12 March 2018 (O’Reilly at [1.2]).  He has experience developing alignment tools for mining and drilling applications (O’Reilly at [2.2]-[2.3]).

·     Brenton James Armitage: Mr Armitage has a degree in Geophysics and has been employed as a wireline engineer, providing wireline and surveying services to the mining industry.  He has been involved in directional drilling programs, and has regularly worked with surveyors and drill rig operators, including observing the surveyors locating and orientating a drill rig for directional drilling purposes.  His role as a wireline engineer involved working at mine sites to set up downhole logging and surveying equipment (Armitage at [2.1(b)]).       

49.  I consider each expert is a suitable candidate to fall within the definition of a person skilled in the art.  Importantly, when considering particular evidence and the weight I shall give it, I have taken into account their experience and relevant knowledge as required.

50.  As a general background understanding of common general knowledge for use when considering the invention in this decision, the evidence makes it clear that prior to the priority date, a range of techniques were used to initially orient a drilling rig.  These are discussed in both parties’ evidence and in particular, evidence of Mr Ayris at [14] and Professor Tapson in Tapson 1 at [49]-[50].  These included magnetic compasses, traditional surveying equipment such as lasers and clinometers, and GPS devices.  Measurements that were taken included azimuth (direction with respect to magnetic or true north) and inclination (dip, elevation). 

51.  With regard to the use of gyroscopic sensors, Professor Tapson suggests that the common general knowledge before the priority date included knowledge about the particular kinds of components used in sensors and instrumentation.  While the evidence does not appear to seek to establish that gyroscopes were commonly used in the field of aligning drilling rigs prior to drilling, Professor Tapson suggests that gyroscopes were known components used in sensing and alignment instrumentation in general, and that there were various known forms of gyroscopes such as fibre-optic gyroscopes, ring laser gyroscopes (RLGs) and micro-electromechanical systems (MEMS) gyroscopes (Tapson 1 at [43]-[46]).  Evidence of the applicant seeks to disagree with this point stating in Ayris at [24] in relation to gyroscope based sensors that they would not have:

“…consider[ed] that these devices, including their utility and unique characteristics, formed part of the common general knowledge that may be attributed to the skilled person”… [because]… “the relevant person skilled in the art is a drilling engineer or surveyor who is seeking to devise an apparatus capable of measuring a very accurate initial orientation of a drill rod of a drilling machine”…

52.  As I have indicated above, I do not consider the person skilled in the art is necessarily simply a drilling engineer or surveyor, in that they must be a person on the ground, doing the manual task of aligning a drilling machine.  A person skilled in the art may well also be a person with knowledge of the design and development instrumentation for mining applications in relation to drilling and alignment.  Professor Tapson fits this characterisation.  I accept his and Mr Brown’s evidence that knowledge of gyroscopes, how they work without GPS and without being affected by magnetic fields, their general use and benefits, was commonly known to the person skilled in the art at the priority date. 

The Prior Art Base (ascertain, understand and regard as relevant)

53.  Subsection 7(3) restricts any pieces of prior art information used for an inventive step objection to those which the person skilled in the art, before the priority date of the relevant claim, could be reasonably expected to have ascertained, understood, regarded as relevant and, where applicable, to have combined them.

54.  The opponent submitted that consultation of patent specifications was commonplace in the art before the priority date.  They referred to Tapson 1 where Professor Tapson states at [31]:

“In my experience, before the Priority Date, it was commonplace for persons working in the field of sensors and instrumentation for use in the mining and resource industry to use patent databases and specifications as a resource to assess technology in that field and the commercial risks associated with particular designs.”

55.  The applicant made reference to the evidence of Mr Ayris where he noted he did not accept this assertion stating at [25] and [26] that:

“Although it is, of course, conceivable that persons may have referred to published patent literature in isolated cases, I certainly do not consider they did so regularly as a matter of course.”

“Patent literature is only searched for and/or consulted in rare and specific circumstances and is certainly not done so routinely by engineers or product designers when seeking to develop a product to solve a technical problem they are facing.”

56.  In response, Professor Tapson notes in Tapson 2 at [28] that:

“I strongly disagree with Ayris at [25]-[26] that skilled persons would not regularly consult patent literature.  Instrumentation designers were before the Priority Date, and remain, acutely aware of intellectual property issues from the perspective of commercial viability of IP protection.  I refer to my own experience in searching and reviewing patents in the projects referred to in paragraphs 21 above.  In my view, it was common place for designers to use patent databases and specifications as a resource to assess the commercial viability of technology.  I was also aware that many mining companies own patents in the instrumentation technology and, in my experience, were aware of their competitors’ patented technology.”

57.  On balance, in the present circumstance I am inclined to favour the evidence of Professor Tapson.  As I have noted above, both experts fit a characterisation of the person skilled in the art.  In this sense a person skilled in the art can possess a variety of skills and backgrounds, including an electrical and electronic engineer with experience in developing mining instrumentation, and a manager responsible for product development.  The evidence of Professor Tapson provides a more detailed account of the circumstances in which patent documents are consulted.  The evidence of Mr Ayris is, to a degree, less convincing it that it simply says that patent documents would only be referred to in isolated, rare and specific circumstance, and it seems, on the basis of a narrow characterisation of who the person skilled may be.  There is no information as to what sort of actions a particular person skilled in the art might take when solving a problem, contrary to Professor Tapson.  In fact it is the case that Mr Ayris agrees with Professor Tapson that patent documents are consulted.  Thus I am satisfied that the person skilled in the art would consult patent documents.

58.  I note that the opponent raised concern with the veracity of Mr Ayris’ evidence in view of matters raised in a relevant Federal Court Proceeding.  I note that I have not considered these submissions any further as relevant documents are not present before me to support the opponent’s assertions.  It follows that my determination of whether patent literature would have been searched turns solely on my preference for the evidence of Professor Tapson. 

59.  I note that each of the patent documents cited by the opponent lie in the field of alignment of drilling machinery.  In view that the problem being solved is to provide a device that is useful for initial alignment drilling machines regardless of satellite vision and regardless of the presence of local magnetic effects, I consider that each of the cited patent documents would have been regarded as relevant.  They all relate to improved aligning devices and methods for drilling machinery.  It is clear that each of the documents would be understood by a person skilled in the art.  Hence, the following citations are considered prior art for the purposes of assessing inventive step.

·     Wright et al. (United States Patent Application US 2005/0155794 A1)

·     O’Reilly (International Patent Application WO 2011/057319 A1)

·     Alft et al. (United States Patent US 6315062)

·     Kosoric (United States Patent Application US 2010/0006337 A1

·     Brownline B.V. (International Patent Application WO 01/61140 A1)

60.  The opponent also seeks to rely on the following product brochure as prior art:

·     Polaris (Fibre Optic Gyrocompass, POLARIS FOG-100 Brochure), exhibit JCT-7

61.  As to whether this document could have been ascertained, understood and regarded as relevant the opponent submits that:

“The Polaris FOG-100 Brochure was typical of the product brochures discussed and circulated within Reflex’s research and development team in February 2012, including when it was considering developing an alignment device in 2008 to 2010.  Indeed, Mr Brown says that he was aware of and had access to the Polaris FOG-100 Brochure and that the brochure has been in Reflex’s possession since before February 2012 ([Brown 1 at [45]).  Likewise, Professor Tapson says that he would have had access to the document and considered it relevant as at February 2012 ([Tapson 1 at [99]-[101]).” 

62.  In particular, Professor Tapson states in Tapson 1 at [100] that “the skilled person would have reviewed information about sensor and instrumentation products and componentry published by suppliers of such products and componentry”.  In response the applicant generally submits that the brochure, being a product brochure for a boat navigation system, would not have been ascertained or regarded as relevant by the skilled addressee at the priority date.

63.  Again, with reference to the problem being to provide a device that is useful for initial alignment drilling machines regardless of satellite vision and regardless of the presence of local magnetic effects, it appears logically clear to me that person’s skilled in the art of instrumentation and measurement in a drilling art would search neighbouring navigation arts to find suitable devices for alignment, that don’t suffer from negative effects of magnetic fields and lost satellite vision.  I consider that such product brochures formed part of the prior art base when considering solutions to technical problems in the art.  It follows that I consider the Polaris Brochure could also have been reasonably expected to have been ascertained, understood and regarded as relevant.  It is thus relevant to considerations of inventive step.

Was the invention obvious?

Common General Knowledge

64.  As per the discussion above, I have already determined that the following is common general knowledge in the art.

·     Alignment of drilling machines before drilling using azimuth and inclination measurements

·     Measuring orientation of drilling machines using magnetic compass, GPS devices and traditional surveying equipment

·     Knowledge of gyroscopes and their general use and benefits in not using GPS and not being affected by magnetic fields

65.  The opponent generally submits that all of the integers of clam 1 were well-known in the field and widely available as at February 2012.  Reviewing the opponent’s evidence I am satisfied that also forming part of the common general knowledge was: the existence of a range of gyroscopic sensors including fibre optic gyroscopes, ring laser gyroscopes, micro-electromechanical systems (MEMS) gyroscopes (Tapson 1 at [43]-46], [64], Tapson 2 at [23]-[27] exhibit JCT-12) ; the incorporation of gyroscopic sensors in instrumentation used in the mining industry (Tapson 2 at [23]-[26], exhibit JCT-12, Brown 1 at [35]-[49]; a variety of GPS alignment systems which measured azimuth and inclination for display on a handheld device enabling alignment prior to drilling (Brown 1, exhibit KLB-1).

66.  The applicant placed considerable focus upon the relevance of the evidence of Professor Tapson.  In particular, they point out that the majority of his work was conducted in South Africa and that he could not serve as a worthy identifier of the common general knowledge in Australia at the priority date.  I do not share this view in regard to the relevant evidence and common general knowledge identified above.  The majority of items of common general knowledge identified above are uncontroverted, with a key point in dispute being whether gyroscopes as general componentry were known as part of the common general knowledge in the art.  I remain satisfied that the opponent has established this point.  In this regard, Mr Brown’s evidence further supports this assertion.  While not working extensively in Australia, Professor Tapson has worked in a relevant role in Australia, and I have no reason to believe in the present circumstances, that there is any geographical aspect to the common general knowledge of sensor components in the relevant art.

67.  A further important feature warranting analysis is the mounting means forming part of the orientation device enabling the device to be mounted to an external surface of a drill rod of a drilling machine.  Reference is made by Professor Tapson and Mr Brown of various magnetic or mechanical methods for attaching or mounting sensory instruments to a drilling machine that are said to be commonly used.  They note:

·     Magnetic bases that were commonly present in an engineering workshop (Tapson 3 at [10]).  Exhibit JCT-14 describes that these devices comprise a ‘V’ shape at their base that enable them to be attached to a round bar such as the column of a drill press.

·     The general use of mechanical clamps to attach instruments to objects in a mining surveying and drilling environment (Tapson 3 at [11]-[12])

·     Mounting equipment such as the “Seco Pole Clamp” designed to clamp a surveying instrument temporarily to a cylindrical structure such as a pole (Tapson 3 at [13] and exhibit JCT-17 showing a product catalogue)

·     Clamp adaptors for mounting surveying instruments to cylindrical pole structures (Tapson 3 at [14] and exhibit JCT-18 showing a product catalogue)

·     Surveying clamps such as the “Seco Column Clamp” comprising a clamp that can be used to mount or attach survey instruments such as theodolites to round or square columns made from steel (Tapson 3 at [15] and exhibit JCT-19)

·     Mounting of directional or orientation guides directly on a drill bit.  A typical drill guide is placed around a drill bit to ensure a drill hole is guided in the correct direction (Tapson 3 at [16] and exhibit JCT-20)

·     The Reflex North Finder APS and Multiwave APS Alignment Tool are well known tools that Mr Brown contends were used in a manner in which the orientation devices were typically attached to the drill rod or another exterior surface of the drill rig (Brown 1, exhibit KLB-1 p13 and 20, Brown 2 at [24])

68.  I relevantly note that in response to this evidence the applicant’s expert, Mr Armitage, states that he was not aware of the Seco Pole Clamp before 2012 and that it was a very small clamp not suitable for a drilling rig (Armitage at [4.27]).  Mr Armitage also points out that drill guides are merely used for example, by carpenters, to ensure a drill hole is made in the correct angle (Armitage at [4.28]).  As I understand it, drill guides do not necessarily provide for additional means of guiding to be mounted there off.  In contrast to Mr Brown’s second declaration at [24], Mr Ayris at [31] argues that “a drill rod is… a counterintuitive and non-obvious place on which to attach an orientation device”. 

69.  Considering the evidence filed in relation to the claimed mounting means, I consider the person skilled in the art would be equipped with knowledge at the priority date, that orientation instrumentation devices could be directly mounted to the cylindrical external surface of drill rods via some mounting means.  The claim is not limited to any particular mounting means nor any particular parameters of a drill rod.  Importantly, claim 1 is also not limited to any particular size or accuracy of the gyroscopic measurement system.

70.  I now return to the problem solved by the present invention being to provide a device that is useful for initial alignment of drilling machines regardless of satellite vision and regardless of the presence of local magnetic effects.  The opponent submits that:

“It was well known, at the priority date, that there were limitations to the GPS and survey methods used in the field at the priority date [Brown 1 at [26], [29], [34]].  Gyroscopes and FOGs were particularly well adapted  to drilling environments because they were known to take highly-accurate measurements, had no moving parts and lacked sensitivity to vibration and magnetic interference, were also known to have been successfully used in other mining survey equipment before the Priority Dates [Brown 1 at [47]].  Indeed Mr Brown was aware of several gyroscope based alignment systems… Reflex itself was working on the development of drilling alignment that incorporated gyroscopes and FOGs since at least late 2008 [Brown 1 at [42]], as were others… For these reasons, a notional research group at the Priority Date developing a rig alignment system would have considered as a matter of course trying to use a gyroscope or FOG in combination with the other features of claim 1…”

71.  In response, the applicant argues that the opponent’s submissions do not focus on the claimed combination as a whole, and that it was not “well known” to use gyroscopes to align drill rigs prior to drilling.

72.  Firstly, it is clear to me that the common general knowledge identified above teaches a display device configured to be communicable with an orientation device wherein that display device shows orientation with respect to true north and inclination.  These are both known critical measurements for aligning a drill rod.  There is also no doubt that alignment processes are commonly known to be performed prior to drilling.  Faced with problems relating to providing a device that is useful for initial alignment drilling machines the person skilled in the art would be directly led to features of:

·     A display device that:

o   Is communicable with an orientation device

o   Is suitable for displaying directional information to an operator, wherein the directional information provides a means for orienting the drill rod prior to drilling. 

o   Displays the orientation and angle of the orientation device.

73.  Remaining to address is whether, in view of the common general knowledge alone, the person skilled in the art would be directly led from the problem being to provide a device that is useful for initial alignment drilling machines regardless of satellite vision and regardless of the presence of local magnetic effects, to further include features whereby the orientation device comprises an electronically operated gyroscope and mounting means enabling mounting to an external surface of a drill rod.

74.  As per above, mounting means for mounting to external surfaces of a drill rod, in particular, for mounting to the extensive cylindrical exterior of a drilling rod appears to me to be a well-known component for mounting devices to structures.  If one is to measure the orientation of a drilling machine, I see no barrier to applying well known mounting techniques to mount the orientation device directly to a location which is suggested by the evidence to be well known (see Tapson 3 and Brown 2 as per above) or well within the capability of commonly known componentry.  There is nothing specific in claim 1 as to size or accuracy limitations that would appear to stand as a barrier to the person skilled in the art using such well known componentry to mount an alignment device.

75.  I also see the feature relating to the use of an electronic gyroscope for measuring true north within the orientation device as being obvious in view of common general knowledge.  It has been established that gyroscopes are commonly known to be unaffected by loss of satellite vision and magnetic field.  In seeking a solution to such problems related to loss of GPS satellite vision and the presence of neighbouring magnetic fields, the person skilled in the art would be directly led to the use of a gyroscope as a suitable substitute to a GPS based or magnetic compass device.  While the applicant suggests that it was not common general knowledge to use gyroscopes for aligning a drill rod, this does not mean that it would not have been obvious to do so.  Equipped with knowledge of their function and benefits, I consider that the person skilled in the art would inevitably and as a matter of routine, consider them suitable for aligning drilling rods.  While commercially available, high precision electronically controlled gyroscopes may have been expensive at the priority date thus presenting a barrier to their marketability as a product, this does not suggest their claimed application would not have been obvious.

76.  Therefore, I find claim 1 lacks an inventive step in view of the common general knowledge alone.  I also consider there to be no inventive features in any of the dependent claims for the following reasons:

·     Claims 2-5 refer to the use of particular gyroscopes being: a mutually orthogonal fibre-optic gyroscope; a set of mutually orthogonal microelectronic mechanical system (MEMS) devices; a gimbal based gyroscope; a strap down gyroscope.  Each of these gyroscope devices are well-known forms of gyroscope (Tapson 1 at [74a-d]).  Claims 8 and 9 respectively refer to pulse width modulation being used on a laser within a fibre-optic gyroscope and control electronics for reducing signal noise, error and drift in a MEMS device.  These were standard control techniques in the art at the priority date (Tapson 1 at [74g-h]).

·     Claim 6 adds the feature of at least one set of mutually orthogonal accelerometers.  Such devices are often known as a clinometer and are standard in the art for measuring inclination angle (Tapson 1 at [74e]).

·     Claim 7 adds the feature of a means for sensing magnetic field strength.  As discussed in Tapson 1 at [74f] with reference to [47], inertial measurement units (IMUs) are well known devices that contain both MEMS gyroscopes and magnetic field sensors.  These devices calculate azimuth both gyroscopically and magnetically to compensate for individual disadvantages.  The feature is therefore obvious.

·     Claim 10 adds the feature of a hand held display which displays the initial orientation of the bore hole created by the machine.  A hand held display is ubiquitous in the art of measurement instrumentation (Tapson 1 at [74i] and [64]), wherein the initial orientation is simply the azimuth and pitch angle at the start of drilling.  The claim is therefore obvious.

·     Claim 11 simply adds the feature of a display device mounted to a vehicle.  I cannot possibly see how generically attaching a display device to a vehicle can be inventive.  Display devices of all types can be mounted in many ways to any structure, for example the mounting of a tablet or mobile phone within a car or other vehicle.  I do not consider evidence is necessary for this point.  The claim cannot be inventive.

·     Claims 12-14 are simply limited to communication between the display device and the orientation apparatus by wireless means such as Wi-Fi and Bluetooth.   I do not consider evidence is required to establish such connectively as routine.  Nonetheless, Tapson 1 discusses that such technologies were adequately well known (see [74j] and [64])

·     Claim 15 is directed towards a method using the device of claim 1 wherein the device is attached to a drilling machine in axial alignment with the machine, the device being subsequently powered on after which time latitude information is provided allowing the device to calibrate.  The drilling machinery is thus manipulated until alignment is achieved.  In relation to this claim Professor Tapson discusses the general operation of gyroscopes such as a fibre-optic gyroscope in that before use, latitude information is required so the system can orient itself (Tapson 1 at [75]).  The act of attaching, powering up, and subsequently using the orientation device to orient drilling machinery is plainly obvious in view of the basic steps of commonly known alignment methods and techniques, including those using identified by Mr Brown that use GPS based devices  (Brown 1 at [32]).  

·     Claims 16 and 17 add further features to claim 15 of tracking relative motion of the orientation device in use and displaying relative azimuth and pitch (inclination) of the orientation device.  These features merely relate to the concept of tracking and displaying orientation with respect to both true north and horizontal as relative/reference points, as the device is moved.  Alignment systems that display the alignment of the alignment device as it is moved are standard in the art (Brown 1 at [32]).   

77.  Therefore I find claims 1-17 lack an inventive step in view of common general knowledge alone.

Wright et al. (United States Patent Application US 2005/0155794 A1)

78.  With reference to the discussion above under Novelty, Wright discloses the features of claim 1 except for the mounting means that enables the orientation device to be mounted onto an external surface of a drill rod of a drilling machine.  As noted earlier, there is insufficient teaching in Wright to suggest how the survey tool is attached and held within the drilling machinery, whether that is between drilling rods of a string of rods, or between a rod and the drilling bit.  There is no described structure of mounting means forming part of an orientation device that facilitates mounting onto an external surface of a drilling rod.

79.  The applicant generally submits that this feature is inventive.  In response, the opponent appears to point to the common general knowledge already identified in addition to Tapson 2 at [38] and Brown 2 at [24].  As noted above, here Mr Brown refers to commonly known GPS and magnetic compass based alignment systems where alignment devices were attached to an external surface for performing alignment before drilling.  Mr Tapson states with regard to Wright that:

“...it would be straight forward and routine matter for an engineer to attach the Wright device to a different part of the drilling machine, including the drilling rod, if desired.”

80.  In considering any possible modification to the teaching of Wright it is important to acknowledge that Wright is essentially directed towards a measurement while drilling device.  As such, the sensors are designed to primarily perform detection while drilling and thus a device would not obviously be mountable on a smooth cylindrical outer surface of a drilling rod.  While an end surface or the thread of a drilling may be considered an external surface, there is insufficient evidence before me to establish that such a mounting means for a measurement while drilling sensor device, formed common general knowledge in the art or would be a routine variation.  The devices identified by Mr Brown are all primarily designed for mounting to the cylindrical outer surface of a drilling rod.  The evidence of Mr Tapson simply appears to assert that it would be straight forward and routine to attach the Wright sensor to any part of the drilling machine, if desired.

81.  The problem I have with the evidence before me is that it does not establish that such a mounting means would be obvious for a measurement while drilling device. Wright essentially teaches away from including the described sensor anywhere but in the line of the drilling string somewhere near to the drill bit. As the document is silent on any structural means for mounting within the drilling equipment, be it an external or internal surface of a drill rod, and there is no particular evidence before me as to how these sensing devices are usually mounted within a measurement while drilling device, I find the claimed invention inventive in view of Wright.  In this regard the opponent has not discharged their onus in establishing that the sensing device of Wright would have been obviously modified to comprise a mounting means that mounts the device onto an external surface of a drill rod. 

82.  Therefore I find claim 1 inventive in view of Wright.  Dependent claims 2-17 add further features to claim 1 and are therefore also inventive in view of Wright.

Alft et al. (United States Patent US 6315062 B1)

83.  Alft also describes a measurement while drilling (MWD) system.  The invention is directed to the controlling of an underground boring tool wherein data is received from sensors at the boring machine, at the boring tool, and optionally at an aboveground site separate from the boring machine location.  More specifically, a controller receives telemetry data from a sensor unit at the boring tool wherein the sensor unit includes one or more of a gyroscope, accelerometer and/or magnetometer.  In terms of location and alignment, the document states at column 4 lines 48-59:

The controller determines a location of the boring tool with reference to a known initial location, such as a known entry point at which the boring tool initially penetrates the earth’s surface.   The entry location is preferably defined in terms of x-, y-, and z-plane coordinates, or, alternatively, in terms of latitude, longitude, and elevation.  The controller determines the location of the boring tool using the boring tool telemetry data received from the navigation sensor unit.  The controller may also determine an orientation of the boring tool in at least two of yaw, pitch, and roll (y, p, r) using the boring tool telemetry data received from the navigation sensor unit. 

84.  The boring system may also include a display for displaying a graphical representation of a boring tool location or orientation, wherein a portable unit may be used to control activities of the boring machine remotely.  It is further noted that the display may be incorporated as part of a universal and remote controller.  The display may communicate information concerning planned bore holes. 

85.  It is clear that Alft is a very similar disclosure to Wright, as discussed above.  Both documents relate to MWD systems, involving gyroscopes for orientation of a drilling machine during the process of drilling.  Both documents disclose remote displays that ultimately receive data from orientation measuring devices that measure true north.  There is no doubt in these documents that an orientation device is mounted in some way, to the drilling machine

86.   It follows that as was discussed above with respect to Wright, in dispute with respect to Alft is whether the document discloses the presence of data before drilling.  The opponent concedes there is no disclosure of the claimed mounting means.  As such, the following features are relevant for further discussion:

·     A device that is suitable for displaying directional information wherein that directional information provides means for axially aligning a drill rod of the drilling machine with a predetermined longitudinal axis of the proposed bore hole.

·     Mounting means that enable the orientation device to be mounted onto an external surface of a drill rod of a drilling machine

87.  On these points the opponent argues that relevant features relating to the presence of data are disclosed by Figure 20 which shows a display screen with display fields for orientation of a boring tool.  The opponent refers to disclosure in Alft at column 54, lines 38-41 that the remote unit 350 includes a steering direction control 352 with which the operator controls boring tool orientation and rate of boring tool rotation.  They also make reference to the display of boring tool location and orientation, and that the entry location is determined and the boring tool heading is stabilised and initialised.  In an alignment process embodied at column 19 lines 4-32, orientation data is acquired from the sensors.

88.  In response, the applicant presented similar logic to that for Wright.  They discussed that while Alft suggests that an entry location is determined prior to drilling, this does not amount to the orientation being determined by the gyroscopic sensing system and displayed before drilling.  I agree that this is so.  The reference to measuring initial entry location is discussed in Alft as being performed by GPS or Geographical Reference System techniques, and does not appear to amount to more than a spatial location (x, y, z) determination.  The document then discusses thrusting of the boring tool into the ground by the addition of several rods to the drilling string, after which time it appears that orientation data is disclosed to be acquired.

89.  Furthermore, the opponent’s reference to column 54, lines 38-41 falls short of disclosure as well.  While the disclosed display can display orientation, there is no indication in Alft that the device measures orientation or displays orientation prior to drilling.  Additionally, while a remote control unit steers the boring tool to generate alignment of the boring tool, there is nothing in the document to suggest that this steering and alignment with an axis of a proposed bore hole occurs at any time but during drilling.  As I have already identified, the devices of Alft are generally designed as measurement and alignment while drilling devices.

90.  In relation to inventive step considerations, as per the discussion above in relation to novelty, I now must consider whether relevant features identified above are obvious.

91.  For similar reasons to those identified for Wright I consider the inclusion of the claimed mounting means has not been established by the opponent as obvious in view of Alft.  Furthermore, there is insufficient evidence before me to suggest that it would have been obvious to modify a measurement while drilling device such as that describe in Alft to provide orientation data prior to drilling.

92.  Therefore, claims 1-17 are inventive in view of Alft.

Brownline B.V. (International Patent Application WO 01/61140 A1)

93.  Brownline is another document that discloses measurement while drilling using gyroscopic sensors.  Importantly, the opponent concedes that there is no disclosure in Brownline of the facilitation of alignment by providing data regarding orientation suitable for alignment with a predetermined longitudinal axis of a proposed bore hole, this being prior to drilling.  There is also no disclosure of mounting to an external surface of a drill rod. 

94.  For the same reasons as Alft, claims 1-17 are inventive in view of Brownline.

O’Reilly (International Patent Application WO 2011/057319 A1)

95.  O’Reilly discloses a laser alignment device for use with a drill rig.  It is useful for measuring an orientation of a drilling rig prior to drilling a proposed bore hole.  Figure 3 is a depiction of a drill rig with a drill rod that can be driven into the ground, in the figure, located within a tunnel.

Figure 3

Figure 15

96.  A laser unit mounted onto the drilling rig can be used to very accurately adjust the azimuth of the rig prior to securing it into position.  The device of the invention attaches to the feed rails or a boom 81 of the drilling rig as per figure 15 reproduced directly above.  The boom supports a feed apparatus which hydraulically rotates a drilling rod that is mounted within.  The rig has a centraliser opening at the front through which the drilling rod passes.  A supporting wheel at the rear of the rig supports a drilling rod that extends back from the feed apparatus.  In figure 15 the drilling rig 80 is fitted with a cradle 82 at the rear of the boom.  The cradle in turn holds a removable laser unit comprising a laser 85 capable of projecting a laser beam 84 to the extremities of front and rear walls of a tunnel.  The unit housing the laser may also comprise a clinometer to take pitch angle readings and a device that will capture the yaw of the rig.  A bearing device such as a compass or gyrocompass that measures true north 90, is also incorporated into the unit allowing the operator to align the rig according to local bearings.  All of these devices are used to align the rig prior to drilling.

97.  Therefore, the majority of the features of claim 1 are disclosed.  It is in dispute as raised by the applicant, that O’Reilly discloses mounting means that enable the orientation device to be mounted onto an external surface of a drill rod of a drilling machine.  This is conceded by the opponent.  The question is then “would it have been obvious to modify O’Reilly to include this feature?”

98.  The opponent makes a range of submissions addressing this question which are summarised as follows:

·     Mounting means for mounting an aligning apparatus with orientation sensors onto an external surface of a drilling rod was a standard feature of well-known prior art alignment systems (reference is made to the evidence I have already discussed).

·     O’Reilly does not teach a particular limitation to the preferred mounting position of the alignment device.  On the contrary, it is submitted by the opponent that O’Reilly states “the attachment will most probably be on the feed frame but this need not be so” and “the gyrocompass [can be fixed] to the mast of the rig or side or any part of the rig or equipment”.

·     There is no particular benefit in mounting the drilling alignment system to any particular part of a stationary drilling rig.  The asserted benefit of the claimed invention is instead associated with an alignment of the alignment apparatus with the drilling direction before drilling (see for example present claim 15).

·     No particular benefits of improved accuracy of alignment by use of the presently claimed invention are described anywhere in the specification wherein the specification also generally suggests mounting of the alignment device to a fixed position on a vehicle to which the drilling equipment is mounted.

·     It was a simple and straightforward engineering step for a person skilled in the art to adapt the attachment bracket of O’Reilly so that it may attach to an exterior surface of a drill rod.

99.  In response the applicant asserts that the addition of such a feature would not have been obvious, firstly suggesting that O’Reilly teaches towards attaching the device to the frame of the drill rig and that there would be no motivation to add the feature as there would be a negative impact upon the operation of the device in O’Reilly.  In this regard the applicant makes reference to the evidence of Mr Armitage where he discusses that it would be counter-intuitive as the laser unit provides an artificial replacement for a physical string line which would need to be offset from the device.

1. I am not convinced by the applicant’s submission in this regard.  Looking at the necessary positioning of the drilling rod in figure 15, I see no barrier in this context to mounting from the drill rod instead of the feed frame. All that would be required is a simple modification to the mounting cradle 82 such that it could suitably fit a cylindrical drilling rod.  As discussed already with respect to the evidence particularly of Mr Brown, mounting means for attaching alignment devices to cylindrical surfaces are common in the art.

2. The applicant then points to the opponent’s evidence to suggest that the feature confers inventiveness and discusses reasons identified by the experts as to why one might not mount an alignment device to a drilling rod.  In particular they identify that Professor Tapson comments that it might be:

   “…more desirable to mount the device at a more protected location where it can be left permanently”… and that “factors such as vibration and the ‘play’ of a spinning drill will mean that the path the drill rod ultimately travels will inevitably diverge from the direction at which the rod points prior to drilling”. 

1. The applicant also points to comments of Mr Brown where he states that:

   “…in my experience, positioning the orientation device onto the drill rod as opposed to any part of the drilling machinery more generally does not improve the operation and/or accuracy of such devices, particularly when it is known in the industry that drill rods are prone to bending and further processes (such as inspecting and testing for the straightest drill rod) would be required before the orientation device could subsequently be reattached to take a measurement.”

2. The applicant contends that these points support the view that there are multiple options available to the skilled addressee and that it would not be obvious to try the claimed mounting arrangement with an expectation that it might produce a useful alternative or better result.

1. An important point to consider in the context of the claim is that, as often pointed out by the opponent, there is no particular aspect of the claimed invention that produces a particular improvement to accuracy of measurement.  Furthermore, the invention is aimed at addressing alignment issues wherein the claimed solution is directed towards alignment prior to drilling.  In this regard, the issues of the drilling rod moving/rotating in use are, in my opinion, irrelevant to the determination of inventive step.

2. I consider it clear that the evidence establishes that a person skilled in the art would be well aware that alignment devices would be readily mountable to various parts of a drilling rig, including a drilling rod.  Returning to the problem solved by the claimed invention being to provide a device that is useful for initial alignment drilling machines regardless of satellite vision and regardless of the presence of local magnetic effects, I consider the person skilled in the art with O’Reilly as a starting point, would be directly led to consider other commonly known mounting means to provide a useful alternative alignment device to O’Reilly.  The device of O’Reilly as disclosed provides a means for alignment that is not affected by loss of satellite vision or local magnetic fields. 

3. Therefore I find that claim 1 is not inventive in view of O’Reilly.  As per my findings regarding the dependent claims discussed earlier with respect to common general knowledge, I see no features of these claims that would confer an inventive step over O’Reilly.  Hence I find claims 1-17 not inventive in view of O’Reilly.

Kosoric (United States Patent Application US 2010/0006337 A1)

1. Kosoric discloses an apparatus for controlling a drilling machine to drill a series of parallel holes.  The apparatus includes a magnetometer-based alignment device which attaches to a drilling machine.  More specifically, Kosoric describes the invention with respect to figure 1 as follows:

An earth drilling machine 10 is shown generally in FIG. 1 includes a self propelled off-road featured vehicle 11 of a size commonly used in the utility industry which provides a mobile base for drilling longitudinal holes.  The tracked or wheeled-vehicle 11 has an elongated structure, with a drilling apparatus 12 mounted on the front of the vehicle 11.  The operator sits in a cab 17 which is mounted to one side of the vehicle.  The drilling apparatus includes a boom 13 which his highly movable in side to side and up and down movement to reduce the need for maneuvering the vehicle.  This is possible by mounting a drill mast 14 on the articulating boom 13 and attaching the mast 14 to the end of the boom 13 by using the two rotating joints 15/16 located in two vertical perpendicular planes…

The drilling machine includes an apparatus 19 for controlling the drilling machine so as to allow the operator to control the orientation of the mast and therefore the drilling tool.  This includes a sensor assembly 20 communicating with a controller 21 in the cab and a display 22 for providing information from the controller to the operator so that the operator can control the position and movement of the drilling machine using controls 23.

1. Kosoric also discloses that the sensor assembly is mounted to the mast of the drilling machine which, in use, may share alignment with a drilling rod ([0003], [0004]). The machine is designed to be used in a process whereby a series of holes are drilled across a terrain ([0009]). Paragraph [0032] describes the alignment process of drilling repeated holes of the same orientation:

When the vehicle has been moved into a new drilling position, the operator only has to move the mast and boom to position the mast over the next drilling location, and the mast is turned so that it is at the angles stored in the memory with respect to the original drilling direction.  This is achieved by taking the sensor readings including the azimuth and two inclination angles, which are then stored, and by using a controller which effects a recalculation of target values of azimuth and inclination using standard mathematical trigonometric relations in order to provide the necessary position of the sensor and mast to align the mast to the previous hole.        

1. Such a process facilitates the accurate drilling of a rock pattern which consists of a number of holes drilled to be parallel in the same inclined plane.  In this regard the drilling machine moves from one drilling position to another and changes the azimuth (heading) being the angle with respect to magnetic north.  Figures 3 and 4 provide a useful depiction of the cab 17 wherein a sensor device 24 is mounted from a mast 29.

1. It is conceded by the opponent that there is no disclosure of the features of:

   ·     Mounting means that enable the orientation device to be mounted onto an external surface of a drill rod of a drilling machine

   ·     Gyroscope and control electronics for measuring an initial orientation of the drilling machine with respect to true north

2. The opponent submits that these features are obvious making reference to declarations 1 and 2 of Professor Tapson.  In relation to the mounting means feature Professor Tapson most relevantly states that “it would have been standard practice for an engineer to create an appropriate bracket to mount the sensor described in Kosoric to any part of the drilling machine”.

1. As I understand the disclosure of Kosoric, the document teaches a piece of machinery that is designed to be used to drill multiple co-aligned drill holes as the machinery moves across terrain.  The manner of alignment and the mounting of the sensor to the mast in Kosoric is thus important as the sensor device is taught to be continually used in between successive drilling events, by a user located in a cab.  In this regard, the document appears to expressly teach away from locating the sensing device on a drilling rod.   To me it would be counter-intuitive to attach sensors to the drilling rod of Kosoric because the sensor is to remain on the drilling machinery when holes are to be drilled.  As a result, regardless of the fact that mounting means for mounting sensor equipment to a drilling rod forms part of the common general knowledge, I do not consider it clear that the person skilled in the art would be directly led to combine common general knowledge with Kosoric to arrive at the claimed invention which includes a mounting means suitable for mounting the sensing device to the drilling rod.  This outcome is to be contrasted with the finding with respect to O’Reilly as O’Reilly relates to an alignment system involving precise alignment of a drill rig for a singular hole, where such alignment is to occur prior to bolting/securing the rig into a particular position.  O’Reilly does not teach any particularly necessary limitation to the location of the alignment device.

1. Therefore I find the claimed invention inventive in view of Kosoric.  I need not consider whether the modification of Kosoric to include an electronically controlled gyroscope is obvious.

Polaris (Fibre Optic Gyrocompass, POLARIS FOG-100 Brochure)

1. Polaris is a brochure for a commercially available fibre optic electronically controlled gyroscope that is said to be useful in boat navigation systems however the document clearly indicates that the device is suitable in “unlimited operating environments”.  The measurement unit has dimensions of approximately 30 x 18 x 17 cm and the system has a remote display device.  The base plate of the measurement unit has four mounting holes.  It measures both azimuth and inclination and displays this data on the display screen.  Thus the document discloses an orientation device with a gyroscope and control electronics that is implicitly suitable for measuring the initial orientation of a drilling machine with respect to true north.  The display device displays the data defined in claim 1 and the display device and orientation device communicate with each other.  Not disclosed by Polaris is:

·     A drilling machinery orientation apparatus, to the extent that the apparatus must comprise directional information that is measured/present that is suitable for aligning a drilling rod before drilling.  This equates to a measurement/presence of relevant data of drilling machinery alignment prior to beginning the drilling of a bore hole.

·     Mounting means enabling the orientation device to be mounted to an external surface of a drill rod.

1. In contending for the obviousness of the features the opponent refers to declarations 1 and 2 of Professor Tapson.  In relation to use in a drilling context Tapson 1 states:

“…the FOG-based gyrocompass in Polaris is used in a vessel essentially for the same purpose as the gyroscope in claim 1: to accurately determine the azimuth of the object to which the orientation device is attached.  The only reason why as skilled person might not use the FOG-based gyrocompass in Polaris to align a drilling machine was the high cost, as explained above.”

1. Mr Tapson also states in Tapson 2 that:

“The Polaris device is used to determine orientation with respect to true north of any object to which it is mounted.  The orientation device of the present invention described and claimed in the ‘365 Patent serves the same purpose in relation to a drilling machine.  It would have been routine for an engineer to create a bracket to mount the Polaris device to a drilling machine for the purpose of measuring its orientation with respect to true north.”

1. Responsive to this evidence, the applicant points to the evidence of Mr Armitage who alleges that the device is not suitable for measuring orientation of a drill because roll and pitch is only measurable to ±60° from the horizon meaning there is a limitation with respect to normal drilling angles (such as vertical).  The applicant also alleges that the device is designed to be bolted to a surface using the four bolt holes, and that the device is designed for hard wiring to a power supply meaning several modifications would need to be made to arrive at the claimed invention.  They submit that such a redesign would not have been obvious.

1. I am inclined to agree with the opponent with particular reference to the discussion and finding above with respect to common general knowledge alone.  Equipped with knowledge of the Polaris device, the person skilled in the art would also have awareness of the common general knowledge of: the alignment of drilling machines before drilling using azimuth and inclination measurements; measuring orientation of drilling machines using magnetic compass, GPS devices and traditional surveying equipment; knowledge of gyroscopes and their general use and benefits in not using GPS and not being affected by magnetic fields; the incorporation of gyroscopic sensors in instrumentation used in the mining industry; and mounting means for mounting measurement devices for alignment to external surfaces of a drill rod. 

2. I see no barrier to applying this common general knowledge to the Polaris device to arrive at the claimed invention for essentially the same reasons as I discussed earlier regarding common general knowledge alone.  Regarding the submissions of the applicant, I do not see the measurement range of inclination as a barrier to use in aligning drill holes as the claim provides no limitation itself.  The device is clearly capable of aligning drill holes within a specified inclination range.  There is further no barrier to using commonly known mounting mechanisms to improve the mounting capability of the Polaris device beyond the four holes disclosed.  Finally, the fact that the Polaris device requires power from a 24 Volt DC source again presents no barrier to suitability of use in relation to the claimed invention.

3. Therefore I find the invention defined in claim 1 lacks an inventive step in view of Polaris.  Dependent claims 2-17 are also not inventive in view of Polaris for reasons already discussed.

Conclusion

1. The opposition is successful.  While all claims are found novel, none are found inventive.  It is not clear to me what aspects of the specification may serve as an inventive feature.  Nonetheless, I will provide the applicant a period of two (2) months to propose amendments to attempt to overcome the identified deficiencies.  In the absence of a suitable amendment, and subject to appeal, I direct the application be refused.

Costs

1. Minnovare Pty Ltd has not been successful in defending the application and, at this stage, I can see no reason why costs should not follow the event.   I note however that at the hearing, the parties sought an opportunity after the issuance of my decision to make further comments regarding costs.  This was requested primarily in light of the substantial amount of additional evidence filed in the proceedings after the completion of evidence in reply.  I agreed at the hearing to provide this opportunity to the parties. 

2. Therefore, noting my preliminary comments above regarding award of costs, I provide the parties fourteen (14) days from the date of this decision to file any further submissions regarding costs.

Dr N. R. Madsen
Delegate of the Commissioner of Patents