Reflex Instruments Asia Pacific Pty Ltd v Minnovare Pty Ltd
[2018] APO 70
•22 October 2018
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Reflex Instruments Asia Pacific Pty Ltd v Minnovare Pty Ltd [2018] APO 70
Patent:2012101210
Title:Drill hole orientation apparatus
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 101M – opposition to certification of an innovation patent – grounds of novelty and innovative step – claims are not novel – claims are not innovative – 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:2012101210
Title:Drill hole orientation apparatus
Patentee: Minnovare Pty Ltd
Date of Decision: 22 October 2018
DECISION
The opposition is successful. Claims 1 and 2 not novel and claims 1-3 and 5 are not innovative.
I allow the patentee two (2) months from the date of this decision to propose amendments to overcome the deficiencies.
I allow the parties fourteen (14) days from the date of this decision to provide written submissions on costs.
REASONS FOR DECISION
Background
This matter relates to innovation patent 2012101210 in the name of Minnovare Pty Ltd. (the patentee), filed on 8 August 2012. The patent claims priority from Australian provisional applications 2012900668 and 2012902786 with respective filing dates of 22 February 2012 and 29 June 2012.
The request for examination of the granted innovation patent was filed on 3 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 subsection 101N(4) that allows the Commissioner to revoke an innovation patent if satisfied on the balance of probabilities that a ground of opposition exists. As it stands, in order to revoke the innovation patent I must be "clearly satisfied that the patent … [is not] valid" (F. Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283).
The patent was examined and certified after which time a third party re-examination request was filed. After the issuance of two adverse re-examination reports, an amendment was allowed and incorporated into the specification. Following this, a notice of opposition was filed on 29 March 2016 by Reflex Instruments Asia Pacific Pty Ltd (the opponent).
At the hearing, only grounds of novelty and innovative 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 patentee, I provided them an opportunity to take a brief amount of time and address these. The patentee filed such supplementary submissions on 15 August 2018.
The evidence
It is noted that a large proportion of evidence in the present matter was filed outside of the statutory periods for filing evidence in support, answer and reply. As a result, regulation 5.23 has been invoked to successfully incorporate evidence in answer to the supporting evidence. Regulation 5.23 also served to provide an opportunity for the opponent to reply to the out of time evidence in answer. 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.
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
·Kelvin Laurence Brown dated 24 March 2016 (Brown 1) with exhibit KLB-1
Evidence in Answer filed out of time but part of the opposition by means of Reg 5.23
·Michael Charles Ayris dated 20 July 2016 (Ayris)
·Thomas Callum McCracken dated 25 July 2016 (McCracken) with exhibits CM-1 to CM-2
Evidence in Response filed pursuant to Regulation 5.23(2)(c)
·Jonathan Craig Tapson dated 20 April 2017 (Tapson 2) with exhibit JCT-12
Shortly before the hearing, both parties sought to adduce further declarations in accordance with regulation 5.23. In particular, on 6 July 2018, a delegate of the Commissioner allowed a request under regulation 5.23 from the opponent for a third declaration of Professor Tapson and second declaration of Mr Brown:
- Jonathan Craig Tapson dated 11 June 2018 (Tapson 3) with exhibits JCT-13 to JCT-25
- Kelvin Laurence Brown dated 12 June 2018 (Brown 2) with exhibit KLB-2
An opportunity was provided to the patentee to file evidence responsive to this new evidence. On 6 August 2018 the patentee filed such evidence in the form of declarations from new experts as follows:
· 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
To the extent that any of the evidence before me that was responsive to an allowed regulation 5.23 request may not be truly in response, I aimed to consider whether such evidence satisfied regulation 5.23(1) as being suitable for consultation. As none of the evidence was particularly relevant to the decision at hand, no determination needed to be made and as such, no further opportunity was required for filing of responsive evidence or making of further representations.
10. 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 9 January 2018.
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."
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).
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.
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.
Figure 1, being the only figure in the specification, depicts the invention in the form of an apparatus.
Relevant paragraphs include [0013], [0019] and [0023] of the specification which respectively state:
Figure 1, shows an orientation device 10 in accordance with the present invention. The orientation device 10 comprises a casing 12 attached to which is a mounting means 14. Preferably, arranged with in the casing 12 is at least one sensing means, the sensing means being able to determine true north relative to the orientation device 10. Preferably, the sensing means comprises at least one mutually orthogonal fibre optic gyroscope (FOG).
In accordance with yet another preferred embodiment of the present invention, the orientation device 10 may further comprise a connection to a display device 18 which is remote to the orientation device 10, with relevant information being displayed on a screen 16. The screen 16 may be configured to display information relating to the orientation of the orientation device 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 orientation device 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 orientation device 10 so that the mounting means 14 engage the drilling rod. The sensing means and accelerometers arranged within the orientation device 10 capture the movement of the orientation device 10 so that relative bearing of the orientation device 10 to true north is constantly calculated.
The claims
17. The specification ends, as amended by a request filed on 2 August 2017, in 5 claims with claim 1 being independent.
1. A drilling machinery orientation apparatus for measuring an orientation of a drilling machine prior to drilling a proposed bore hole, the apparatus comprising; an orientation device and a display device that is remote to the orientation device, the orientation device comprising mounting means enabling the orientation device to be mounted to a drilling machine, at least one gyroscope and control electronics for measuring the orientation of the drilling machine with respect to true north, the orientation device is communicable with the display device for displaying directional information to an operator, wherein the directional information provides means for axially aligning a drill rod of the drilling machine with a predetermined longitudinal axis of the proposed bore hole.
2. An apparatus for orientating drilling machinery according to claim 1, wherein the mounting means enables the orientation device to be mounted to the drilling machine for measuring the orientation of the drilling machine and detached from the drilling machine.
3. An apparatus for orientating drilling machinery according to claim 1 or 2, wherein the display device is a hand-held display device.
4. An apparatus for orientating drilling machinery in accordance with any one of the preceding claims, wherein the mounting means enables the orientation device to be mounted to an external surface of the drill rod.
5. An apparatus for orientating drilling machinery in accordance with any one of the preceding claims, wherein the display device is arranged to display the orientation and angle of the orientation device, the drilling machinery and the initial orientation of the bore hole created by the drilling machinery.
It is useful to give some direct consideration to the scope of claim 1. Firstly, the claim is directed towards a drilling machinery orientation apparatus that is suitable for measuring orientation of such machinery, in particular for aligning a drill rod, prior to drilling a bore hole. The apparatus comprises an orientation device that is communicable with a display device for displaying directional information to an operator. The claim then states that the directional information provides means suitable for axially aligning a drill rod of the drilling machine with a predetermined longitudinal axis of the proposed borehole. I consider that for directional information to provide a means that is suitable for alignment with a predetermined longitudinal axis of a proposed bore hole, this directional information must be measured and/or must exist prior to the occurrence of any drilling. In other words, the phrase “provides means” imposes a temporal limitation to the presence of directional information in the claim. If there is no information present before drilling, then there is no suitable means provided to assist with alignment at that stage. Furthermore, I consider directional information to constitute particular data or information such as an angle of inclination or bearing with respect to north. The orientation device also comprises a mounting means that enables it to be mounted to a drilling machine prior to drilling, and further includes at least one gyroscope and control electronics. The gyroscope and associated control electronic measure true north.
The relevant law
Novelty
19. For the purposes of 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]; 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.”
Innovative Step
23. The claims of an innovation patent must involve an innovative step. Subsection 7(4) of the Patents Act provides that:
An invention is to be taken to involve an innovative step when compared with the prior art base unless the invention would, to a person skilled in the relevant art, in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, only vary from the kinds of information set out in subsection (5) in ways that make no substantial contribution to the working of the invention.
24. The decision of the Full Court in Dura-Post (Aust) Pty Ltd v Delnorth Pty Ltd [2009] FCAFC 81 confirmed the approach of Gyles J in Delnorth Pty Ltd v Dura-Post (Aust) Pty Ltd [2008] FCA 1225 at [52]- [53], who at first instance made a clear distinction between an innovative step and an inventive step:
“There is no need to search for some particular advantage in the art to be described as an innovative step which governs consideration of each claim. The first step is to compare the invention as claimed in each claim with the prior art base and determine the difference or differences. The next step is to look at those differences through the eyes of a person skilled in the relevant art in the light of common general knowledge as it existed in Australia before the priority date and ask whether the invention as claimed varies from the kinds of information set out in s7(5) in ways that make no substantial contribution to the working of the invention ...
The phrase ‘no substantial contribution to the working of the invention’ involves quite a different kind of judgement from that involved in determining whether there is an inventive step. Obviousness does not come into the issue ... Indeed the proper consideration of s 7(4) is liable to be impeded by traditional thinking about obviousness.”
25. Gyles J at [61] also provided an indication as to what is encompassed by the requirement of a ‘substantial’ contribution:
“In my view the provenance of the phrase ‘make no substantial contribution to the working of the invention’ indicates that ‘substantial’ in this context means ‘real’ or ‘of substance’ as contrasted with distinctions without real difference”.
26. While there is no definitive measure for considering the test for innovative step, the Patent Examiner’s Manual of Practice and Procedure does identify some questions which may assist, including:
a) Does the difference identified between the invention and the prior art convey an advantage to the invention?
b) Does the difference provide a technical or functional contribution to the invention?
c) Is the difference a significant aspect of the operation of the invention?
Person Skilled in the Art and Common General Knowledge
29. 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.”
30. 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 pre-drilling 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.
31. The present matter includes before me, evidence from six different experts: ProfessorTapson, 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.
· Kelvin 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 patentee, 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)]).
32. 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.
33. 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).
34. 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 patentee 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”…
35. 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 of instrumentation for mining applications in relation to drilling and alignment. Professor Tapson fits this characterisation. I accept his evidence that knowledge of gyroscopes and their general use and benefits was commonly known to the person skilled in the art at the priority date.
The Prior Art Documents for Consideration
36. I will consider the matters on a document by document basis.
O’Reilly (International Patent Application WO 2011/057319 A1)
37. 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 a drilling 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
38. 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 also may 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.
39. Therefore, a majority of the features of claim 1 are disclosed. It is in dispute as raised by the patentee that O’Reilly does not disclose a “display device” that satisfies each of the following limitations:
a) The display device is remote to the orientation device
b) The orientation device is communicable with the display device for displaying directional information to an operator
c) The displayed directional information provides means for axially aligning a drill rod of the drilling machine with a predetermined longitudinal axis of the proposed bore hole.
40. The opponent submits there is disclosure of feature a) in O’Reilly where it is stated at page 6 lines 17 to 26 that:
There may also be a “remote control” variation. To explain, sometimes, the drilling rigs are operated by a single person. Larger rigs are medium-sized having a control cabin to operate the boom arm and various other components. As the laser unit is attached to the drill rig, it may become difficult for a sole operator to (a) operate the entire drill rig from the cabin while at the same time (b) needing to leave the cabin constantly (sic) keep check on the laser unit. Therefore, a remote-control laser unit where the lasers might be attached to some form of motor or other type of driving mechanism to adjust the lasers and where the telescopic arm can be extended and retracted by remote-control may be provided. The laser unit could then be operated from the cabin.
41. Reference is also made by the opponent to claims 13 and 14 which discuss the laser alignment device including a visual notification means to notify the user when the laser pointing devices are correctly aligned. The opponent also pointed to claims 22 and 23 which refer to the laser unit having a head unit. The opponent then refers to pages 12 and 13 of O’Reilly which state that:
In use a remote reading is translated to or taken from the compass from the alignment of the compass to the marker points on the front and back walls, using a laser beam. This reading can be translated to the rig 80 by taking the laser/compass unit 90 with the reading on it and fixing it to the drilling rig 80...
For example, as illustrated in Figure 16A, a laser/compass unit 90 is mounted on a tripod and using the laser being aligned with the front and rear markers, a true burying (sic – “bearing”) from the tripod mounted laser/compass unit 90 reads 45°.
As illustrated in figure 16B, the laser/compass unit 90 can then be transferred to the cradle 82 mounted on the drilling rig 80…
42. As I read the text above in relation to the remote control of the laser unit, I see nothing in this text that teaches the possibility of display information for alignment remotely to an orientation device which measures orientation. In this regard, while mechanisation is taught of the movement of the laser itself in order to direct the laser beam in a certain direction, this does not appear to extend further than remote control being done so from a cabin of a drilling rig. While the laser unit is taught to be operated from the cabin, there is no teaching of a display device that is remote to the orientation device, by way of this discussion of remote control.
43. Similar can be said of the other identified parts of the disclosure that discuss the use of the laser/compass unit remotely from the drilling device, performing an alignment on a tripod, before the unit is attached to the drilling rig. In that discussion, the display device which displays directional information for alignment is not remote from the laser/compass unit. In fact, the display device is the laser/compass unit.
44. A final reference in submissions was made to disclosure in O’Reilly at page 6 where an alarm in the form of a light is disclosed to light up when the lasers are correctly aligned. A reflective strip is discussed to be placed on the survey marker where correctly aligned light could rebound and be sensed at the laser unit. When sensed, a visual signal could be generated. However I consider that an alarm in the form of a visual signal alone such as light falls short of a disclosure of a display device capable of showing directional information to an operator. I consider that a display device for displaying directional information constitutes a particular display mechanism that indicates actual data regarding particular orientation such as for example, angle of inclination or direction of azimuth. Furthermore, there is no clear and unmistakable direction to such a light alarm being remote to the orientation device.
45. Therefore, claim 1 and dependent claims 2-5 are novel in view of O’Reilly.
46. In relation to innovative step considerations, as per the discussion above in relation to novelty, it is clear that O’Reilly fails to disclose drilling machinery orientation apparatus having an orientation device in communication with a remote display device, the remote display device capable of displaying directional information from the orientation device for alignment purposes prior to drilling. I now must consider whether this feature makes a substantial contribution to the working of the invention.
47. The opponent’s submissions as to an innovative step of claim 1 with respect to O’Reilly contend that there is disclosure of the relevant features in the document as per the discussion in respect of novelty. The patentee submitted that the aspects of remote display make a “real” and “of substance” contribution to the working of the invention. They submit:
“For example, having a display device that is remote from the orientation device allows for the display device to be positioned well away from the drill rig in use.”
“A remote display device reduces the number of times that a drill rig operator needs to approach the drill rig while the drill rig is being operated, thereby enhancing the safety of the operation.”
48. The invention works by providing data to a drilling rig user for alignment purposes. Displaying data remotely from the orientation device is relevant to the way in which the invention works as measured signals regarding orientation are sent from a detection device to a separate device. It appears to me that this aspect of functionality is a real difference to the way in which the claimed invention works. I can see advantages similar to that identified by the patentee. The manner in which data translates from detection to depiction to a user for purposes of alignment does not seem to me to be a peripheral aspect of the way in which the orientation apparatus of the claim works. It is a real and functional aspect of the claimed invention.
49. Therefore, claim 1 and dependent claims 2-5 are innovative in view of O’Reilly. I have reviewed the declarations and I note that none of the evidence filed before me affects this finding.
Wright et al. (United States Patent Application US 2005/0155794 A1)
50. 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.
51. 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.
52. 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 operation parameters, drilling tool orientation and/or location coordinates, or other information from a system controller. 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]).
53. 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.
54. A first point raised by the patentee is that Wright does not disclose a drilling machine 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.
55. Firstly, 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 drilling machinery orientation apparatus for measuring an orientation of a drilling machine (and thereby a drill rod). The document also clearly discloses a remote display device and gyroscope with control electronics for measuring the orientation of the drilling machine with respect to true north. With reference to figure 1B, it is also clear that Wright discloses a mounting means to enable the MWD survey tool to be mounted to the drilling machine (item 24 of figure 1B is assumed to intend to point to the extended rectangle behind the drilling bit 22). Furthermore, the orientation device of Wright is communicable with the display device for displaying direction information to an operator. Features remaining that require further discussion include:
· An orientation apparatus suitable for measuring an orientation of a drilling machine prior to drilling a proposed bore hole
· 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.
56. With reference to my earlier analysis of the construction of claim 1, I note that the claim appears to be limited to the feature whereby directional information must be present/measured prior to the occurrence of any drilling for it to provide a means suitable for alignment with a proposed bore hole. In this regard, the existence or presence of data relating to the direction of the drilling machine with respect to true north, acquired via measurement prior to drilling, could serve to be suitable for axially aligning a drilling rod. Therefore, for there to be a disclosure of claim 1 in Wright, there must be a clear and unmistakable direction to the measurement of directional data in relation to an alignment of a drilling machine/rod that can be used for alignment, prior to the drilling of a hole.
57. Regarding the relevant remaining features, the opponent focuses upon paragraph [0045] which states that measurements using the MWD survey system 30 can begin when the drilling tool 20 is above the surface 12 prior to drilling. The opponent also points to paragraph [0031] which discloses the display remotely coupled to MWD survey tool electronics, and that the MWD survey system may be coupled to a computer dedicated to the control of the drilling system. Paragraph [0035] also discloses signals from the survey tool being used to calculate the orientation and/or position of the drilling tool. In Wright, it is clear that orientation information includes measurements of a gyroscope measuring bearing with respect to true north.
58. In response, the patentee emphasises that the device is a measurement while drilling device and subsequently, there is no disclosure that the system of Wright is capable of communicating or displaying information that would enable an operator to orient a drill rod prior to drilling.
59. I consider it clear that Wright discloses measurements of orientation prior to drilling that are capable of being used to align a drilling rod with a proposed direction. While measured at a lower resolution at or above the surface, the measurements of Wright are necessarily taught to be useful for alignment. While the document itself does not explicitly teach the act of aligning prior to drilling, all that is required by the claim is the measurement of data that is suitable to perform a task of alignment before drilling. In possession/with knowledge of data regarding orientation prior to drilling, one is enabled to align a drilling machine and thereby a drilling rod prior to drilling. The claim is not limited to any particular act of alignment. In short, the directional information measured enables axial alignment of a drill rod with a desired bore hole axis before drilling starts.
60. Therefore, claim 1 lacks novelty in view of Wright.
61. Dependent claim 2 is directed to a mounting means that enables detachable mounting of the orientation device to and from the drilling machine. Paragraph [0024] discussed above makes it clear that the MWD survey tool can be interposed between lengths of drill string, thereby providing detachable mounting. Claim 2 therefore lacks novelty in view of Wright.
62. Regarding dependent claims 3 and 4, Wright fails to disclose a hand-held display device and also fails to direct the reader to the feature of a mounting suitable for mounting the orientation device to an external surface of a drilling rod. Regarding mounting to an external surface, relevant paragraph [0024] identified by the opponent gives no indication of how the MWD survey tool would be mounted to a drilling rod, let alone an external surface of a drilling rod. Therefore these claims are novel in view of Wright.
63. Dependent claim 5 is further limited by the display device being arranged to display orientation and angle of the orientation device, the drilling machinery and the initial orientation of the bore hole created by the drilling machinery. Here the opponent points to paragraph [0032] which states that the display is suitable for displaying operating parameters, drilling tool orientation and/or location coordinates, or other information from the system controller. As identified at paragraphs [0041] and [0044], the survey tool can measure azimuth and inclination. Importantly, I see no disclosure of arrangement of the display to show each of the expressly claimed items of information. Therefore the claim is novel.
64. I must now consider remaining claims 3-5 as to whether they provide an innovative step.
65. As discussed, claim 3 refers to the remote display device being a hand-held device, this feature not being disclosed in Wright. Wright simply discloses the use of standard display components in paragraph[0032]. The claimed invention works by taking a measurement of directional information prior to drilling. This information can be sent from the orientation device to a display device that is remote to the orientation device. Adding the feature of the remote device being hand-held appears to me to be an insignificant feature in respect of the working of the invention. The invention appears to essentially work the same way regardless of whether or not the display is of a size that can be held. While the patentee submitted that the feature provides benefits such as location flexibility, safety and ease of replacement, I do not consider these “benefits” significant, when compared to a display that is not hand-held. I consider this feature peripheral to the working of the invention, and hence the claim is not innovative.
66. Claim 4 refers to a mounting means which enables the orientation device to be mounted to an external surface of the drill rod. I consider this feature makes a substantial contribution to the working of the invention as it functionally contributes to the manner in which orientation measurement and alignment may be conducted prior to drilling. This feature is innovative in view of Wright.
67. Claim 5 refers to the display arranged to display the orientation and angle of the orientation device, the drilling machinery and the initial orientation of the bore hole created by the drilling machinery. As above, the claimed invention works by taking a measurement of directional information prior to drilling. This feature of the claim simply adds details of what information may be displayed on the display device. The particular display arrangements are not arranged to be shown at a particular time that is relevant to alignment before drilling, and hence they do not provide a functional contribution to the working of the invention. As such, they appear peripheral to the working of the invention. Claim 5 thereby lacks an innovative step.
68. In summary, I find that claims 1 and 2 lack novelty (and thereby lack an innovative step) in view of Wright. Claims 3 and 5 are found to lack an innovative step in view of Wright.
Alft et al. (United States Patent US 6315062 B1)
69. 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.
70. 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.
71. 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. It follows that as was discussed above with respect to Wright, in dispute with respect to Alft is whether the document discloses:
· An orientation apparatus suitable for measuring an orientation of a drilling machine prior to drilling a proposed bore hole
· 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.
72. On this point the opponent argues that relevant features 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.
73. In response, the patentee 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.
74. 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.
75. Therefore, claim 1 and dependent claims 2-5 are novel in view of Alft.
76. In relation to innovative step considerations, as per the discussion above in relation to novelty, I found that Alft fails to disclose drilling machinery orientation apparatus being suitable for orienting a drilling machine prior to drilling a proposed bore hole in that directional information is measured/present enabling alignment before drilling. I now must consider whether this feature makes a substantial contribution to the working of the invention.
77. The invention works by obtaining data regarding orientation of a drilling machine for alignment purposes before drilling. Acquiring data prior to drilling from the orientation device is substantially relevant to the way in which the invention works as measured information regarding orientation is present, thereby enabling the device to be used to align a drilling rod with a proposed bore hole. In other words, providing directional information before any drilling action commences fundamentally assists with alignment prior to drilling. It is central to the claimed invention’s functionality, providing a substantial contribution to the working of the invention.
78. Therefore, claim 1 and dependent claims 2-5 are innovative in view of Alft. I have reviewed the declarations and I note that none of the evidence filed before me affects this finding.
Brownline B.V. (International Patent Application WO 01/61140 A1)
79. Brownline is another document which 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 prior to drilling. As to whether such features make a substantial contribution to the working of the invention, I have already discussed this point above with respect to Alft.
80. Therefore, claim 1 and dependent claims 2-5 are novel in view of Brownline. For reasons already discussed, these claims are also innovative.
Nakamura (Japanese Patent Application JP 8-320228)
81. Nakamura is also a measurement while drilling device that uses a gyroscopic sensor for orientation measurement. There is no explicit or express disclosure of the use of this system prior to drilling. The opponent suggests that such a feature is implicitly disclosed in the document. They note that:
“Nakamura explicitly states that it provides orientation information, in particular azimuth and inclination information, and in particular the incline and azimuth of a drill rod (see Nakamura claim 1 and at [0004] to [0009]. While Nakamura does not expressly provide that this is specifically orientation of the drill rod prior to drilling it would be clear to the skilled address (sic) that this information was a subset of the information that Nakamura would provide throughout the drilling process.”
82. I fail to see that the quoted paragraph of Nakamura provide such an implicit disclosure. Claim 1 broadly describes the operation of a measuring device for measuring the posture of a drill rod describing a concentric inner tube inside a drill rod that transmits rotary force to a drill bit, wherein the device further comprises an azimuth meter within the inner tube. Paragraphs [0004] to [0009] provide further discussion of the problems in the art being hole bending while drilling, and how the described invention can prevent difficulty such as withdrawing from the drill hole to make measurements. In this sense, I consider it clear that the context of the entire disclosure is for measurement while drilling, there being no implicit teaching that the device of Nakamura will provide data for alignment of a drilling machine prior to drilling a hole.
83. As such for the reasons already identified, the claims are novel and innovative in view of Nakamura.
Polaris (Fibre Optic Gyrocompass, POLARIS FOG-100 Brochure)
84. Polaris is a brochure for a commercially available fibre optic gyroscope that is said to be useful in boat navigation systems. 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. While it appears clearly capable of being attached to drilling machinery and used in such an operating environment, and also clearly capable of measuring orientation of drilling machinery, I see no clear and unmistakable direction to the feature wherein prior to drilling a proposed bore hole, directional information provides means for axially aligning a drill rod of the drilling machine with a predetermined longitudinal axis of the proposed bore hole.
85. As discussed above, the feature not disclosed in Polaris is considered to provide a substantial contribution to the working of the claimed invention. It follows that the claims are both novel and innovative in view of Polaris. As above, none of the evidence filed before me affects this finding.
Conclusion
86. The opposition is successful. Claims 1 and 2 are not novel and claims 1-3 and 5 are not innovative. As the matters can be overcome by amendment I will allow a period of two months for the patentee to propose amendments.
Costs
73. Minnovare Pty Ltd has not been successful in defending the patent 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 response. I agreed at the hearing to provide this opportunity to the parties.
74. 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
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