Ronneby Road Pty Ltd v ESCO Corporation CQMS Pty Ltd v ESCO Corporation Caterpillar Inc. v ESCO Corporation - [2015] APO 3

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Ronneby Road Pty Ltd v ESCO Corporation
CQMS Pty Ltd v ESCO Corporation
Caterpillar Inc. v ESCO Corporation
[2015] APO 3

Patent Application: 2011201135

Title:Wear assembly

Patent Applicant:                   ESCO Corporation
Opponents:   (1) Ronneby Road Pty Ltd
  (2) CQMS Pty Ltd
  (3) Caterpillar Inc.
Delegate:  R Subbarayan
Decision Date:  5 February 2015
Hearing Date:  5 November 2014, in Canberra
:
Catchwords:  PATENTS - opposition to grant of patent – novelty, inventive step, clarity, fair basis and sufficiency – prior use supported by photographs – none of the grounds made out – costs awarded against opponents

Representation: Patent applicant: Mr Stephen Burley of Counsel assisted by Mr Stephen Worthley and Mr Wayne McMaster of Minter Ellison
Opponent 1: Mr Barry Newman of Armour IP
Opponent 2: Did not appear
Opponent 3: Mr Craig Smith of Counsel assisted by Mr Bret Connor and Mr Jonathan Schnapp of Freehills

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2011201135

Title:Wear assembly

Patent Applicant: ESCO Corporation
Date of Decision: 5 February 2015
DECISION
All three oppositions fail. The claimed invention is novel, inventive, clear, fairly based, sufficient and a manner of manufacture. Costs according to Schedule 8 awarded against each of the three opponents.
REASONS FOR DECISION
BACKGROUND

Patent application 2011201135 in the name of ESCO Corporation (ESCO) was filed on 15 March 2011 as a divisional application of AU2007241122. Through this parent application it claims an earlier priority date of 30 March 2006. Following examination, the application was advertised as accepted on 8 November 2012. The application has been opposed under section 59 of the Patents Act by three different opponents, namely Ronneby Road Pty Ltd (hereinafter “Ronneby”), CQMS Pty Ltd (hereinafter “CQMS”) and Caterpillar Inc. (hereinafter “Caterpillar”). The three oppositions were heard together in Canberra on 5 November 2014. Prior to the hearing, CQMS advised that they would not be appearing at the hearing or filing written submissions.
GROUNDS OF OPPOSITION
The three opponents have opposed the grant of the patent on the following grounds:
Ronneby:        Novelty, Inventive Step, Clarity, Fair Basis and Full Description.
CQMS:           Novelty, Inventive Step, Clarity, Fair Basis and Manner of Manufacture.
Caterpillar:      Novelty, Inventive Step, Clarity, Fair Basis, Manner of Manufacture and Utility.
EVIDENCE
Evidence filed in respect of the three oppositions is as follows:
Opponent 1 (Ronneby)
·Evidence in support comprises a declaration by Benjamin Hughes dated 5 August 2013 with exhibits BH-1 to BH-7.
·Evidence in answer comprises a first declaration by Howard William Robinson dated 2 November 2013 and a second declaration by Howard William Robinson dated 3 January 2014 with exhibits HWR-1 to HWR-2.
Opponent 2 (CQMS)
·Evidence in support comprises a declaration by Adam Luxton dated 19 July 2013 along with exhibits ADL-01 to ADL-13.
·Evidence in answer comprises a declaration by Howard William Robinson dated 30 January 2014.
Opponent 3 (Caterpillar)
·Evidence in support comprises a first declaration by Bruce Alexander Leslie dated 19 September 2013 with exhibit BAL-1 and a second declaration by Bruce Alexander Leslie dated 14 October 2013 with exhibits BAL-2 to BAL-3.
·Evidence in answer comprises a declaration by Howard William Robinson dated 13 January 2014.
SPECIFICATION
The specification states that the invention pertains to a wear member that is commonly attached to excavating equipment, such as excavating buckets, to protect the equipment from wear and to enhance the digging operation.
Such wear members typically are elongate with an excavating tooth or point at a front end and a socket at a rear end. The socket is fitted over a base or nose on the excavating bucket and releasably secured thereto with a locking member that is inserted into aligned apertures in the socket and base. The wear members are subject to very harsh conditions in use and consequently wear out and need to be replaced at regular intervals. The wear member, base and locking member together constitute a wear assembly. The present invention is stated to provide an improved wear assembly that provides for “enhanced stability, strength, durability, penetration, safety and ease of replacement”.
The specification then describes a number of aspects of the wear assembly including the provision of various stabilizing surfaces to resist the different loads that wear assemblies are subjected to, the shape of the wear member and the construction and arrangement of the locking member. However the claims of this divisional application are solely directed to the locking arrangement for locking the wear member on the base.
The locking arrangement comprises a lock 17 that is fitted within a through-hole 81 in the wear member 12. Through-hole 81 has a generally rectangular shape with end walls 85, 87, front wall 89 and rear wall 91. The lock includes a narrow end 103, a wide end 105, a front face 107 and a rear face 109. Narrow end 103 is formed as a pivot member 113 that cooperates with bulb 93 on end wall 85 of the through-hole to enable the lock to pivotally swing about bulb 93 between hold and release positions. In the hold position it protrudes into the socket into an aligned cavity 83 in the base 14 to secure the wear member to the base. In the release position, it still remains secured to the wear member but does not protrude into the socket thereby permitting the wear member to be removed from or fitted over the base. Latch formations provided in the locking member and the wear member ensure that the lock is securely held in the wear member in both the hold and release positions. The lock is moved between hold and release positions “without a hammer for ease of use and enhance safety” and in a preferred arrangement this is done using a prying tool T. Figures 23 and 25 reproduced below show the locking member 17 in the release and hold positions respectively.
In a typical wear assembly, the locking member is a separate member that is inserted into the aligned openings in the wear member and base at the time of installation to secure the wear member to the base. However in the present invention the lock is characterised by being “integrally secured to the wear member for shipping and storage as single integral component”. It is installed into the wear member in the release position at the time of manufacture and shipped to the customer as a single unit. The lock remains secured in the release position within the opening in the wear member even when the wear member is not fitted to the base of the excavator bucket and this is stated to provide benefits such as “less shipping costs, reduced storage needs, and less inventory concerns” and also reduced “risk of dropping or losing the lock during installation”. While the lock normally remains integrally sescured within the through-hole in the wear member, the specification also states that if required the lock can be completely removed for shipping, replacement or installation.
Another characterising aspect of the invention is stated to be the pivotal movement of the lock between hold and release positions about an axis that extends generally longitudinally of the wear member for easy use and stability. The sides of the lock are stated to form “a secure and stable locking arrangement without substantial loading of the hinge or latch portions of the lock”.
The specification ends with 26 claims of which independent claims 1, 6, 9, 13, 19 and 25 are directed to the integral connection of the lock to the wear member and independent claim 5 is directed to the pivoting arrangement of the lock. The independent claims read as follows:
1. A wear member for attachment to excavating equipment comprising a front end to contact materials being excavated and protect the excavating equipment, a rear end, a socket that opens in the rear end to receive a base fixed to the excavating equipment, a through-hole in communication with the socket, and a lock integrally connected in the through-hole and movable without a hammer between a hold position where the lock can secure the wear member to the base and a release position where the wear member can be released from the base, the lock and the through-hole being cooperatively structured to retain the lock in the through-hole in each of said hold and release positions irrespective of the receipt of the base in the socket or the orientation of the wear member.
5. A wear member for attachment to excavating equipment comprising a front end defining a narrow front edge for penetrating into the ground, a rear end, a socket defined by top, bottom and side walls that opens in the rear end to receive a nose fixed to the excavating equipment to define an excavating tooth, a through-hole in communication with the socket, and a lock received in the through-hole for pivotal movement between a hold position where the lock secures the wear member to the nose and a release position where the wear member can be released from the nose, wherein the pivotal axis extends in a direction generally parallel to the receipt of the base into the socket.
6. A wear member for attachment to excavating equipment comprising a front end to contact materials being excavated and protect the excavating equipment, a rear end to mount to a base fixed to the excavating equipment, and a lock movable between a hold position where the lock secures the wear member to the base and a release position where the wear member can be released from the base, wherein the lock remains secured to the wear member in the release position irrespective of whether the wear member is mounted to the base or the orientation of the wear member.
9. A wear member for excavating equipment comprising:
a wearable body having a wear surface to contact materials being excavated and protect the excavating equipment, and a cavity to receive a base fixed to the excavating equipment; and
a lock integrally secured to the wearable body for movement between a hold position wherein the lock engages the base to hold the wearable body to the base and a release position wherein the lock permits installation and removal of the wearable body on and from the base, the lock being secured to the wearable body in both the hold and release positions irrespective of whether the base is in the cavity or the orientation of the wear member.
13. A wear assembly for attachment to excavating equipment comprising:
a base fixed to the excavating equipment;
a wear member including a front end to contact materials being excavated and protect the excavating equipment, and a rear end to mount to the base fixed to the excavating equipment; and
a lock integrally connected to the wear member and movable without a hammer between a hold position where the lock contacts the base and the wear member to secure the wear member to the base and a release position where the wear member can be released from the base, wherein the lock remains secured to the wear member in the release position.
19. A wear assembly for excavating equipment comprising a base fixed to the excavating equipment and a wear member having (i) a wearable body having a wear surface to contact materials being excavated and protect the excavating equipment, and a cavity to receive a base fixed to the excavating equipment, and (ii) a lock integrally secured to the wearable body for movement between a hold position wherein the lock engages the base to hold the wearable body to the base and a release position wherein the lock permits installation and removal of the wearable body on and from the base, the lock being secured to the wearable body in both the hold and release positions irrespective of whether the base is in the cavity or the orientation of the wearable body.
25. A wear assembly for excavating equipment comprising: a base fixed to the excavating equipment, the base having a nose free of moving components; a wear member including a front end to contact materials being excavated and protect the excavating equipment, and a rear end having a socket for receiving the nose to support the wear member on the base; and a lock movably secured to the wear member for movement between a hold position where the lock engages the base and the wear member to secure the wear member to the base, and a release position where the wear member can be released from the base, the lock remaining secured to the wear member irrespective of receipt of the nose into the cavity or the orientation of the wear member.
ONUS OF PROOF
The examination request for this patent application was filed on 15 September 2011. As a consequence, substantive amendments of the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 do not apply to the present application. This includes the amendment to subsection 60 (3A) that allows the Commissioner to refuse a patent application if satisfied on the balance of probabilities that a ground of opposition exists.
Consequently the former standard for opposition proceedings applies and the opponent must establish that it is clear or practically certain that the patent is invalid (F Hoffman La Roche AG v New England Biolabs Inc [2000] FCA 283 at [29], [67]; [2000] FCA 283; 50 IPR 305 at 311, 319; Commissioner of Patents v Sherman [2008] FCAFC 182 at [18], [22]; [2008] FCAFC 182; 79 IPR 426; Genetics Institute Inc v Kirin-Amgen Inc [1999] FCA 742; [1999] 92 FCR 106 at [17]).
CLAIM CONSTRUCTION AND CLARITY
It is a recognised tenet of Australian patent law that each claim must be read as part of the entire specification (Electrical and Musical Industries Ltd v Lissen Ltd 56 RPC 23 at 39), and thus the meaning of the words used in a claim may be affected by what is said in the body of the specification (Rosedale Associated Manufacturers Ltd v Carlton Tyre Saving Co Ltd [1960] RPC 59 at 69). While noting that it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim, by adding to those words glosses drawn from other parts of the specification (Welch Perrin & Co Pty Ltd v Worrel [1961] HCA 91; (1961) 106 CLR 588 and Decor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385), it is legitimate to refer to the rest of the specification to explain the background to the claims, to ascertain the meaning of technical terms and resolve ambiguities in the construction of the claims (see Interlego AG v Toltoys Pty Ltd [1973] HCA 1; (1973) 130 CLR 461 at 476).
I also note what Middleton J said in Eli Lilly and Company Limited v Apotex Pty Ltd [2013] FCA 214, 100 IPR 451 at [139]:
It is well settled that the Court should, from the outset, approach the task of patent construction with a generous measure of common sense. The Court must place itself in the position of a person skilled in the relevant art, being the subject matter of the patent. From this perspective, the patent is to be read as a whole, in the context of the specification and in light of the prevailing common general knowledge and state of the relevant art at the priority date.
The correct approach to the construction of claims was also 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.
More recently in Fei Yu trading as Jewels 4 Pools v Beadcrete Pty Ltd [2014] FCAFC 117 the Full Court when considering the proposition that integers in a claim must be construed in isolation from other integers stated:
We consider that this approach is fundamentally flawed. The use of integers is very much a forensic technique. It provides a structure within which the Court and the parties address the factual issues. However, the meaning of each claim must be determined by reference to the words, the way in which they are arranged, and in the context of the specification as a whole.
At the hearing it became clear that the anticipation of the claimed invention is likely to very much depend on the construction of certain terms in the claims. The main issues in relation to clarity are as follows:
“Integrally connected” and “Integrally secured”
Each of independent claims 1, 9, 13 and 19 define that the lock is either “integrally connected” or “integrally secured” to the wear member.
At the hearing both Ronneby and Caterpillar made individual submissions in relation to these terms but their main points can be collectively summarised as follows:
·These terms are not explained or defined in the body of the specification.
·While the Courts have in the past considered the phrase “integral with” to mean “made of the same piece of material”, this is clearly not the case with respect to the lock of the claimed invention.
·Mr Hughes the expert for Ronneby could not understand the meaning of these terms.
·While the end of claim 1 could be said to define the content of “integrally connected” in that it requires that the lock and through-hole be cooperatively structured to retain the lock in each of the hold and release positions irrespective of the receipt of the base in the socket or the orientation of the wear member, claims 13 and 15 separate these requirements out and this reinforces that this term must have a separate and independent meaning, applying the principle of “presumption against redundancy”.
·To the extent, these terms are capable of being understood, it means the same as “connected” or “secured” respectively.
The applicant on the other hand submitted that when each of the claims is read as a whole and in the context of the specification, it is clear that an “integrally connected” or “integrally secured” lock is one that is secured or retained in a hold and release position, such that in practice it is not liable to become inadvertently displaced from the wear member or lost during typical shipping, handling and operating conditions. That is, the lock is secured or integral to the wear member such that, once built, it is part of the wear member.
The Oxford Dictionary includes the following meanings for the term “integral”:
1.Of or pertaining to a whole. Said of a part or parts: Belonging to or making up an integral whole; constituent, component; spec. necessary to the completeness or integrity of the whole; forming an intrinsic portion or element, as distinguished from an adjunct or appendage.
2.Made up of component parts which together constitute a unity
The authorities that I have referred to clearly state that claims should be construed in the context of the specification as a whole and that where the terms in the claim are unclear or ambiguous, it is legitimate to refer to the body of the specification to resolve these ambiguities.
While terms such as “integral with” or “integrally formed” could be construed, depending on the context, as being made of the same piece of material, here the claims define the lock as being “integrally connected” or “integrally secured” to the wear member. In my view the use of the words “connected” or “secured” implies that the lock is at least initially a separate component which is then in some way connected or secured to the wear member to constitute a whole, the whole in this case being the assembly of the wear member and the lock.

I am not convinced by the argument that these terms should be construed the same as “connected” or “secured” with the word “integrally” providing no further qualification. It is clear from the definitions that I have mentioned above, that the term “integral” brings with it the concepts of forming or constituting “a whole” and forming an “intrinsic portion”. Applying these definitions, in my view these terms clearly require that the lock remain secured to the wear member to constitute a whole unit once it is fitted to the wear member. Such a construction is also fully consistent with what is described in the body of the specification. As I have earlier discussed, the invention clearly lies in the lock being fitted securely in the release position to the wear member such that it cannot fall off and get lost.
Each of the independent claims that include one of these terms further defines that the lock remains secured or retained to the wear member in the release position. This in my view again reinforces the construction that the lock is intended to remain as an integral part of the wear member even in the release position.
I do not find the argument regarding claims 13 and 15 separating these requirements persuasive. The introduction of the limitations of not being received in the socket or the wear member being placed in a different orientation only in claim 15 does not it in way affect the meaning that I have given to these terms .
The meaning of these terms in the claims is clear in that it defines that the lock is connected or secured to the wear member to form a unitary component with the wear member. In other words, the wear member would normally come with the lock fitted within the through-hole.
“Retained” and “Secured”
Each of independent claims 6, 9, 13, 19 and 25 defines that the lock is secured to the wear member in the release position irrespective of whether the wear member is mounted to the base or the orientation of the wear member, while independent claim 1 defines that the lock is retained in the through-hole of the wear member irrespective of the receipt of the base in the socket or the orientation of the wear member.
Although none of the opponents raised any issues with the construction of the terms “secured” or “retained”, the applicant submitted that these terms are not to be read in isolation, but rather in the context of the rest of the claim which requires the lock to be integrally connected or integrally secured to the wear member irrespective of whether the lock is in the hold and release positions and when read in such context, it is clear that these terms should be interpreted as more than a mere “connection”. They submitted that I should interpret these terms as requiring that the lock will not become loose or come apart from the wear member during typical shipping, handling, storing and installation operations.
I am inclined to agree. The term “secure” in my view clearly imports the requirement to “fix or attach (something) so as not to become loose, give way, fall off, or come apart; to hold firmly in place”. (Oxford Dictionary). So even giving the term its plain meaning, it is clear that it defines more than a mere connection. Such a construction is also fully consistent with what is described in the specification. As I have earlier discussed, one of the aspects of the invention clearly lies in the lock being fitted securely in the release position to the wear member such that it cannot fall off and get lost and in the opposed specification this is achieved by latch formations provided in the locking member and the wear member. What is required by this term is some kind of positive retention of the lock to the wear member in the release position such that it will not become loose or fall off during use.
Some of the independent claims further define that the lock should remain secure irrespective of the orientation of the wear member. This in my view again emphasizes the requirement that the lock needs to be securely held in place despite any knocks or other forces that it may be subjected when the wear member is placed in various orientations.
While the applicant has chosen to use the term “retain” rather than “secure” in claim 1, in my view this term imports a similar limitation as the term “secure” in the context of the claimed invention. Similarly in claim 25, while the claim only defines the “lock remaining secured to the wear member” without any specific reference to either the hold or release positions, when read in context, in my view it is clear that this refers to the lock remaining secured in both the hold and release positions.
Pivotal movement
The applicant submitted that the term “pivotal movement” as it appears in claims 2 and 5 is to be distinguished from the broader concept of “rotation”.
The Oxford Dictionary defines pivot as “to turn on or as if on a pivot” and rotate as “to turn about a centre or axis, usually a centre or axis inside the thing that is turning; to perform one or more revolutions”.
In the opposed application the lock turns on a pivot constituted by the bulb and in that respect it clearly falls within the definition of pivotal movement. It does not turn or perform one or more revolutions about an internal axis and hence I would not consider its movement as rotation.
Other clarity issues
The opponents raised a few other clarity issues in relation to terms such as “a threaded adjustment”, “moveable without a hammer”, “moveably secured”, “base is a one piece member free of movable components” and “turns about an axis less than a full turn”, but in my view the skilled addressee would easily understand what each of these terms mean in the context of the invention. These terms are clear.
NOVELTY
It is well established that the general test for lack of novelty 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.
This test is satisfied if the alleged anticipation discloses all the essential features of the invention as claimed (see Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40; (1990) 91 ALR 513 at 517). In order to meet this requirement, the prior art must "contain clear and unmistakeable directions to do what the patentee claims to have invented" (The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 at 486).
In AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99, the full Federal Court held:
Sufficiency of disclosure is a cardinal anterior requirement in the analysis of whether a prior art document anticipates a claimed invention. It is only after the stage of assessing the sufficiency of disclosure – which involves a determination about whether a prior document has “planted the flag” as opposed to having provided merely “a signpost, however clear, upon the road” or, perhaps, something less – that the notion of reverse infringement comes into play as the final and resolving step of the required analysis. It is not the first step of the required analysis; nor is it the only step.
ADAMIC (AU 766917 or US 2002/0000053 or US 6959506)
Adamic is relied on by all three opponents and is directed to a locking mechanism for securing a wear member on a base. It discloses a wear member 1 having a socket I to receive a base fixed to the excavating equipment, a through-hole 5 in communication with the socket. A pin retainer is inserted into a through-hole and held non-rotatably therein. In the embodiment shown in figures 8 and 9, the retainer has a band portion 10 that snaps into a groove in the through-hole 5 to secure the retainer within the through-hole. The pin retainer is threaded internally. A threaded lock pin 13 is placed in the pin retainer by screwing it into the retainer and may be tightened to extend through the through-hole 5 and into a recess 7 in the base 3 (support structure) to thereby secure the wear member to the base. It also states that the lock pin may be “placed into the retainer prior to installation of the wear member on the support structure as long as the inner end of the pin is flush with the interior surface of the wear member”. To unlock the wear member it states that the pin may be unscrewed “until its inner edge is flush with the inside surface of the wear member or it may be fully removed”.
The opponents submitted that the teaching in Adamic of placing the lock pin into the retainer prior to installation such that the inner end is flush with the interior surface constitutes the release position and in this position the locking pin is integrally connected or integrally secured to the wear member.
The applicant argued that although Adamic states that the locking pin need only be unscrewed to bring it flush with the interior surface to remove the wear member from the base, it also clearly contemplates fully removing the locking pin. There is also no disclosure of storing or transporting the wear member with the locking pin held in the release position and therefore it clearly does not disclose the feature of the lock being integrally connected or integrally secured to the wear member.
While there is some teaching in Adamic that the locking pin could be placed into the retainer prior to installation and could be unscrewed to a release position without fully removing the pin, in my view that is not the same as “integrally connected” or “integrally secured” in the manner that I have construed these terms. There is no disclosure of the wear member being always fitted with the locking pin to form a unitary component. It is clearly possible and contemplated in Adamic to remove the pin fully from the wear member. In fact that appears to be the general teaching of Adamic with the teaching of partially screwing in the pin into the wear member just prior to installation being a possible alternative. There is no teaching in Adamic about fitting the wear member being always supplied with the locking pin securely fitted in the wear member.
I also note that there is no single distinct release position for the locking pin. While I accept that the position in which the inner end of the locking pin is flush with the interior surface can be considered to be the release position, I note that this is but one among many positions in which the wear member can be removed from the base. The release position could be equally one in which the pin is fully removed from the retainer. In my view there is no “clear and unmistakeable directions” in Adamic to provide the locking pin as an integral component of the wear member.
The feature of the lock being integrally connected or secured to the wear member as defined in independent claims 1, 9, 13 and 19 is not disclosed by Adamic and these claims are therefore novel over Adamic.
In relation to independent claims 6 and 25, although they lack the limitation of the lock being an integral unit with the wear member, they still require that the lock be positively secured to the wear member in the release position in such a manner that it cannot become loose or detached.
Both Ronneby and Caterpillar submitted that in the release position in which the locking pin is flush with the interior surface, the locking pin clearly has some threaded engagement with the retainer and would therefore remain “secured” to the wear member as required by these claims. They argued that there is nothing to suggest in Adamic that the pin could become loose or detached if the orientation of the wear member were to be changed and the fact that the pin may be rotated beyond its release position such that it can be removed could not prevent the embodiment from infringing claim 1. They also highlighted that even in the opposed specification it is stated that the lock could be removed.
The applicant on the other hand submitted that the threaded engagement between the locking pin and the retainer will be affected by many variables such as the axial length of the unthreaded conical end 14 of the pin 13, the axial length of the thread in the retainer, the pitch of the thread, the tolerances between the pin and the retainer, any taper of the thread and the length of the pin protruding from the wear member in the release position, none of which are discussed in Adamic. They argued that in Adamic there is every possibility that the pin could get loosened from its minimal threaded engagement with the retainer and fall off and that this was therefore not a secure connection as required in the claims.
As discussed earlier, in Adamic there is no single distinct release position for the locking pin. It contemplates various release positions including a minimum release position in which the inner end of the pin is flush with the inner surface of the socket, a fully detached position of the pin and various positions in between. Clearly it has no additional means to positively secure the pin in any one of the release positions. While it may be possible that the frictional resistance between the threads itself is sufficient to prevent loosening of the pin and hold it secure in some of the release positions that is not sufficient to establish anticipation. As stated by Parker J in In Flour Oxidizing Company Ltd v Carr & Co. Ltd [1908] 25 RPC 428:
… where the question is solely a question of prior publication, it is not, in my opinion, enough to prove that an apparatus described in an earlier Specification could have been used to produce this or that result. It must also be shown that the Specification contains clear and unmistakable directions so to use it.
In my view Adamic does not provide clear and unmistakeable directions that the locking pin is secured to the wear member in the release position as required by independent claims 1, 6, 9, 13, 19 and 25. While the opposed specification does state that the lock can be removed if desired, the fact remains that it still has means to ensure that the lock remains secured in the release position in normal use and this feature is lacking in Adamic.
Independent claim 5 unlike the other independent claims is solely directed to the pivotal movement of the locking member. While it defines that the lock is received in the through-hole it does not define the lock as being integrally secured to the wear member or that it remains secured to the wear member in the release position.
At the hearing, neither Caterpillar nor Ronneby made any submissions regarding the lack of novelty of claim 5. The locking pin in Adamic rotates about its central axis to axially translate within the through-hole. Although Mr Leslie, the expert declarant for Caterpillar was of the view that this could be considered a pivotal movement of the locking pin, I beg to differ. As discussed under “Claim Construction and Clarity”, in my view pivotal movement is different to rotation. In Adamic, the locking pin rotates but does not turn about a pivot in the manner of the lock of the claimed invention. Therefore this feature is not disclosed by Adamic. Even if I am wrong on this point, and the movement of the pin in Adamic can be considered a pivotal movement, the pivotal axis extends in a direction that is perpendicular to the receipt of the base into the socket and not parallel as required in the claim. At least one feature of claim 5 is therefore not disclosed in Adamic.
In summary all of the independent claims are novel over Adamic as one or more features of these claims are not disclosed in Adamic. It follows that the dependent claims are also therefore novel.
TORQ-LOK
Ronneby alone also relied on the prior use of the Torq-Lok product as an anticipation of the claimed invention. The Torq-Lok product was submitted to be the commercial product of the Adamic prior art document.
The evidence in relation to Torq-Lok comprises the statutory declaration of Mr Benjamin Hughes. Mr Hughes is currently Research and Development Manager for Talon Engineering SDN BHD and has considerable experience in the field of ground engaging tools (GET). In 2003 and 2004, while in the employ of Shark Abrasion Systems Pty Ltd, he states that he twice visited Quality Steels Foundry in Alberta, Canada. During these visits he was shown the TORQ LOK product. The TORQ LOK is a lock for attaching a wear member (GET) to an excavator bucket. He states that the feature of this product that caught his interest was that the lock could be secured in the GET without the GET being located onto a bucket. He was so impressed by this that he took a number of photographs which are annexed to his declaration as exhibits BH-1 to BH-6. These 6 photographs are reproduced below.
BH-1 and BH-2 show two TORQ LOKs, one with an associated retainer sleeve.
BH-3 shows a pallet of wear members (cast lip adaptors) fitted with TORQ LOKs ready for shipping.
BH-4 shows a wear member (cast lip adaptor) fitted with a TORQ LOK ready for shipping.
BH-5 shows a wear member (cast lip shroud) fitted with two TORQ LOKs ready for shipping.
BH-6 shows the wear member (cast lip shroud) showing the TORQ LOKs projecting internally.
Ronneby primarily relied on exhibit BH-3 showing a number of wear members fitted with TORQ LOKs loaded on a pallet ready to be shipped. At the hearing Mr Newman submitted that the TORQ LOKs seen in this exhibit are clearly integrally secured to the wear member and are also in the release position as they slightly protrude from the outer surface of the wear member. He also referred to paragraph 5 of Mr Hughes’ expert declaration where he had stated that the fact that the TORQ LOK was secured in the release position was what drew his attention to the TORQ LOK in the first place.
At the hearing Mr Newman also attempted to display a physical exhibit that he claimed was a model of a wear member fitted with a TORQ LOK, but this was strongly objected to by the applicant as this was not in evidence. As I fully agreed I refused to allow Mr Newman to rely on this physical exhibit at the hearing. Mr Newman did not seek leave to bring it in as further evidence either.
The applicant argued that the TORQ LOKs as seen in exhibit BH-3 are not in the release position for the following reasons:
·Exhibit BH-1 shows the TORQ LOK before installation with the pin in the release position within the retainer, and in this release position, the head of the pin protrudes considerably out of the retainer and some of the threaded portion of the pin can also be seen.
·In BH-3 the pins do not protrude to the same extent as seen in BH-1 and no threaded portion can be seen. It therefore follows that the pin is not in the release position.
While it is plainly evident from exhibits BH-3 to BH-6 that the TORQ LOKs are integrally connected within the through-hole in the wear member prior to shipping, what is however not clear is whether the TORQ LOKs are in the release position. It is not in dispute that exhibits BH-4 to BH-6 show the TORQ LOKs in the hold position as the head is flush with the external surface of the wear member and the unthreaded tip of the pin protrudes inside the socket. While exhibit BH-3 shows the pins protruding out of the wear member, it certainly does not appear to be protruding to the same extent as shown in exhibit BH-1 where the pins are clearly in the release position. However as they protrude out of the wear member they would also appear not to be in the hold position as shown in exhibits BH-4 to BH-6. Being photographs that are not supported by any written description, I need to treat them with great caution. Based on the photographs alone, I cannot with any degree of certainty come to the conclusion that the pins in exhibit BH-3 are in the release position. In my view they appear to be in a position which is somewhere between the hold and release positions. While Mr Hughes states that he saw the wear members ready to be shipped fitted with the TORQ LOKs in the release position, in my view none of the photographs that he has annexed to his declaration appear to support this statement.

Looking at the dimensions of the unthreaded tip, the threaded portion, the head of the locking pin and the depth of the retainer sleeve as seen in exhibits BH-1 and BH-2, it would appear that there would only be very minimal threaded engagement between the pin and the retainer in the release position. I am not convinced that this minimal threaded engagement would be sufficient to secure the pin in the release position without the risk of becoming loose and falling off. Similar to Adamic, there is nothing in TORQ LOK to ensure that the pin is positively secured in the release position.
In my view there is no “clear and unmistakeable directions” in the photographs to provide a wear member in which the lock is securely held on the wear member in the release position of the lock.
Independent claims 1, 6, 9, 13, 19 and 25 and their dependent claims are novel over the TORQ LOK prior use information as the feature of the lock being secured to the wear member in the release position is not disclosed.
For reasons given in relation to Adamic, independent claim 5 is also novel over TORQ LOK.
ROBINSON (US 6708431)
This document was filed as evidence by both Caterpillar and CQMS. Caterpillar submitted that claims 13 and 14 lack novelty over Robinson. In support of this they relied on the embodiment of figures 8-13. In this embodiment the wear member 10a is locked to the base 24a by means of a pin 18a and a pair of disc shaped locking plugs 84. The plugs are rotatably disposed within inner portions of through-holes 36a in the wear member. The plugs are inserted from the inward end of their associated through-hole but are prevented from passing outward through their associated through-hole by a ledge 90.
Caterpillar argued that when the locking plug members are in the release position, they are prevented from falling off the wear member by the presence of the base inside the wear member and in that respect they are “secured” to the wear member in the release position and it is only when the base is not received in the socket, that the locking plug is not secure in the wear member.
I am not persuaded by this argument. Clearly the plug members are not “integrally connected” to the wear member in the manner that I have earlier construed this term. The plug members are clearly meant to be fitted into the through-holes only at the time of installation. I also do not consider that the plugs being prevented from coming out of the inner side merely because of the presence of the base can be considered as the plugs being “secured” in the release position. Caterpillar’s submissions in this regard are not supported by any similar views in Mr Leslie’s expert declaration. On the other hand, the applicant’s declarant Mr Robinson, who also happens to be one of the inventors of this prior art document, states in his declaration:
The idea was to insert them at the time of installing the tooth on the adapter. The plugs 84 would remain in the opening of the tooth when the tooth was installed on the adapter. However, if the tooth was not installed, the plugs 84 would not be secured in the tooth. They were not intended to be left in when the tooth was not installed, and to the best of my recollection, this possibility was not considered. There was nothing to keep these plugs 84 in place when the tooth was not installed, and they could have fallen out in various circumstances, such as if the tooth was knocked or turned on its side, or simply through vibration.
The lock of Robinson is not integrally connected to the wear member and nor is it securely held in the release position. Claim 13 and its dependent claims are therefore novel over Robinson.
JONES (US 5709043)
This document was filed as evidence only by CQMS and was also accompanied by a Novelty Chart according to which Jones discloses all of the features of claims 1, 2, 4 and 6-26. Although this document was not filed in evidence by Caterpillar and they are therefore not entitled to rely on this document, Caterpillar provided submissions in relation to this document in their written submissions filed for the hearing.
Jones in the embodiment of figures 26-31 discloses a lock 14a having front and rear arcuate bearing faces 277, 278 with a latch 281 projecting from front bearing face 277. The lock fits within complementary holes 287, 288 in sidewalls of the base 13 and the wear member 14. The lock is inserted from outside the wear member into the complementary holes and the latch holds the lock securely in the hold position. CQMS stated in the Novelty Chart that the lock, according to the figures, has a longer top surface than the bottom surface and this would prevent the lock from coming all the way out of the hole on the outside of the point. However Mr Robinson states that “the tooth could not be removed from the adapter with the lock installed in the through-hole” and having read Jones, that is my understanding of the locking arrangement of Jones as well. While I agree that the lock could be said to have a pivoting movement about bearing wall 293 between hold and release positions, the pivot axis extends in a direction that is generally perpendicular to the receipt of the base into the socket.
Each of the independent claims and their dependent claims are therefore novel over Jones as at least one of the claimed features is not disclosed.
US 5009017 (DIEKEVERS), US 2885801 (HILL) and US 2004/0037637 (LIAN)
These documents were again filed as evidence only by CQMS supported by Mr Luxton’s Novelty Chart in which it is asserted that these documents anticipate some of the claims.
The applicant provided written submissions explaining why these documents do not anticipate any of the independent claims and these submissions are also supported by the evidence of Mr Robinson.
I have read these documents and agree with the applicant’s submissions.
In both Diekevers and Lian, the lock is not integrally connected to the wear member and also it is not secured in the wear member in the release position. Hence none of the claims are anticipated by either of these documents.
Hill is an interesting document. Whilst it is directed to a hammered locking arrangement, in terms of disclosing the features of the claimed invention, it comes fairly close to some of the claims. It discloses a wear member 12 with a socket 24 that is adapted to be mounted to a base 11. While the top wall 21 of the wear member is hardened to provide a wear resistant work surface, the side walls 25, 26 of the socket are relatively malleable. These walls have adjacent the rear ends thereof, enlarged heads 27, 28 that align with locking recesses 19, 20 in the base when the socket it mounted thereon. In one embodiment, the heads comprise a pair of ears 34, 35 spaced apart by a slot 36. The heads/ears are adapted to be pounded into the recesses by striking with a hammer to thereby lock the wear member to the base. The wear member can be removed by either driving a wedge or by hammering the top surface adjacent the side walls.
The Luxton Novelty Chart asserts that the heads/ears constitute a lock that is integrally secured to the wear member for movement between hold and release positions and being integrally formed with the wear member would be secured to the wear member even in the release position.
While the locking heads are formed from the side walls of the wear member and in that respect are integrally formed with the wear member, in my view they are not a separate component that is integrally secured or connected to the wear member in the way that I have construed these terms. I am also not convinced that the deformation of the heads into or out of the recesses in the base by hammering can be considered to be within the scope of the feature that the lock be movable between hold and release positions. There are no set hold and release positions between which the head has the ability to move, with the extent of the deformation of the heads being solely dependent on the amount of hammering and it is therefore possible that the head could be hammered into or out of the locking recess to differing extents. I am also mindful that CQMS’s submissions in the form of the Novelty Chart are not supported by any expert evidence.
In my view all of the independent claims and consequently their dependent claims are novel over Hill.
INVENTIVE STEP
It is a requirement of subsection 18(1) of the Patents Act that the invention, so far as claimed in any claim, involves an inventive step. Subsection 7(2) states that an invention is taken to involve an inventive step unless it would have been obvious to a person skilled in the art in the light of the common general knowledge, considered alone or together with the prior art. A document is prior art for this purpose if it is publicly available and "a skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded [the document] as relevant" (subsection 7(3)).
Information that is "publicly available" is information that the public has or can acquire by consulting a source open to it, i.e. material that can be inspected "as of right" by the public. It is sufficient that the information is available to a single person, provided that person is able to use the information freely without an obligation of confidence (See: Gadd v Mayor of Manchester (1892) 9 RPC 516 at page 527; Fomento v Mentmore (1956) RPC 87 at page 105; and Monsanto (Brignac's) Application (1971) RPC 153 at page 159).
The test for obviousness is whether it would have been a matter of routine to proceed to the claimed invention.
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.” (Aicken J in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12 at [45]; (1981) 148 CLR 262 at 286)
More recently, 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 the approach taken in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157 at 187 in which Graham J had posed the reformulated Cripp’s 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]?
Problem to be solved
Neither Ronneby nor CQMS identified what they considered was the problem to be solved or any commonly known problem in the field. Caterpillar submitted that the problem is to design a useful lock wear members of excavators.
The applicant submitted that Caterpillar’s submission is not supported by their evidence and that in the present case, part of the inventive step lies in the conception of the problem to be solved and then addressing that problem by the use of a combination whereby the lock is secured within the wear member in the release position.
The specification states in the “Background of the Invention” that wear members for excavating equipment “are commonly subjected to harsh conditions and heavy loading. Accordingly, the wear members wear out over a period of time and need to be replaced. Many designs have been developed in an effort to enhance the strength, stability, durability, penetration, safety, and/or ease of replacement of such wear members with varying degrees of success”. Apart from these statements it does not specifically identify any one or more specific problems to be overcome.
In terms of the lock aspects of the presently claimed invention, while the specification mentions the benefits of less shipping costs, reduced storage needs and reduced risk of dropping or losing the lock during installation, there is no evidence to suggest that shipping costs, storage needs or losing locks during installation were commonly known problems. This also does not appear to be a problem that was recognised in any of the prior art that are relied upon by the opponents. Therefore I cannot consider these as the problems to be solved, in line with the full Federal Court’s decision in AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99.
I am therefore of the view that the problem to be solved of the claimed invention can only be stated in broad terms as to design a useful lock for wear members of excavators that provides for ease of replacement.
Common general knowledge
None of the opponents provided any submissions on the common general knowledge in the field of the claimed invention. The applicant submitted that the relevant common general knowledge at the priority date of the claimed invention was that a wear assembly consisted of three separate parts, namely base, wear member and lock that would be supplied individually and then subsequently assembled together at the time of installation. Each of the parts could be individually replaced as required.
I accept this as it is supported by the evidence of Mr Hughes, Mr Leslie and Mr Robinson. From reading Mr Leslie’s evidence, it is also clear that the following were also common general knowledge in the art:
·Locking systems that used a locking pin that would be hammered into aligned apertures in the base and wear member that often caused injury to the operators during the operation of removing and installing new wear members.
·From the early 1990’s, safety concerns produced a strong focus on development of hammerless locking systems.
ADAMIC
Ascertained and Regarded as Relevant Requirements
Caterpillar submitted that Adamic is titled “Torque Locking System for Fastening a Wear Member to a Support Structure” and hence would be clearly be considered by a skilled addressee to be relevant to considering the design of a wear member with a useful lock.
Mr Leslie states in his declaration that it would be common practice in the art to review competitor’s products and this would involve conducting patent searches for the dual purpose of confirming patentable features and identifying potential infringement. Mr Robinson in his evidence in answer, does not provide a contrary view on this. I am therefore satisfied that the skilled addressee would have searched patent documents and ascertained Adamic as it is also in the field of locking systems for wear members.
Adamic is a hammerless system for locking the wear member to the base and hence it is likely that it will provide for greater ease of replacement over conventional hammered locking pins. I am therefore satisfied that the person skilled in the art would have considered Adamic as relevant to the problem to be solved.
Is the Invention Obvious?
As discussed under Novelty, the claimed invention is distinguished from Adamic in that the lock is supplied as an integral part of the wear member and it remains positively secured to the wear member even when it is in the release position.
Neither Ronneby or Caterpillar provided any detailed submissions on why the claimed invention would have been obvious over Adamic other than to say that if I find one or more features is not clearly and unambiguously disclosed in Adamic, then any such variation is obvious to the person skilled in the art. Caterpillar’s expert declarant Mr Leslie also only addresses the novelty of the claimed invention over Adamic and does not provide any opinion on the inventiveness of the claimed invention over this document. Mr Hughes’ opinion on inventive step is also restricted to TORQ LOK.
In the absence of any expert evidence I am not satisfied that faced with the stated problem it would have been obvious to incorporate some kind of means to ensure that the locking pin remains secured to the wear member in the release position and also thereby become an integral part of the wear member.
The claimed invention is therefore inventive over Adamic.
TORQ LOK
Ascertained Requirement
Although Ronneby did not file written submissions on the ascertain requirement, at the hearing Mr Newman submitted that as Mr Hughes had seen the TORQ LOK product during his visit to the Quality Steel Foundries it followed that a person skilled in the art has ascertained this prior art information.
The applicant on the other hand argued, that Mr Hughes was a single representative of a single company who had been sent to visit Quality Foundries in a privileged position and that was not sufficient to establish that the ordinary skilled person in the art would make the visit to Quality Steel Foundries that Mr Hughes did.
I agree with the applicant. Mr Hughes had gone to Quality Steel Foundries on an organised visit to inspect the foundry and investigate the possibility of using Quality Steel Foundries to cast some of their GET products. He was not any member of the public who went to Quality Steel Foundries and took photos of the TORQ LOK product in use. While it is possible that members of the public could have had access to the premises of Quality Steel Foundries and viewed wear members fitted with TORQ LOKS, Ronneby has adduced no evidence to support this. Also while Mr Hughes states that there was no confidentiality attached to the photographs that he took, there is no statement from him to suggest that he shared the photographs with other people or that he stored or displayed them in such a manner that they could have been freely accessed by a person skilled in the art.

100. I am therefore not satisfied that the TORQ LOK prior art information could have been ascertained by the person skilled in the art. It therefore follows that TORQ LOQ is not part of the prior art base for determining inventive step. However, even if I am wrong on this point, it will not make any difference to the final outcome, as will become clear in the following paragraphs where I have proceeded on the basis that TORQ LOK could have been ascertained.
Regarded as Relevant Requirement
101. Ronneby has also not adduced any evidence as to why the person skilled in the art would have considered the TORQ LOK information as being relevant to solving the problem of providing a useful design of the lock for providing ease of replacement.
102. However from the photographs it is clear that the TORQ LOK is a hammerless system for locking the wear member to the base and hence it is likely that it will provide for greater ease of replacement over conventional hammered locking pins.
103. I am therefore satisfied that the person skilled in the art would have considered the TORQ LOK as relevant to the problem to be solved.
Is the Invention Obvious?
104. As discussed under Novelty, the disclosure of TORQ LOK is a threaded lock that can be fitted to the wear member as an integral part at the time of manufacture so that the wear member is shipped with the lock member fitted in the through-hole and held in the locked position.
105. The claimed invention differs from TORQ LOK in that the lock is securely held in the through-hole even in the release position.
106. Ronneby submitted that this novelty conferring feature is “a mere workshop improvement” and that Mr Hughes has stated in his declaration that “If I had been asked at the time to achieve the function of the TORQ LOK without using a thread, my first thought would be to use a series of circumferential ridges which could be levered into position, not unlike the way the urethane sleeve of the TORQ LOK locks into position. In general, the force to move a pin axially is applied in one of three ways: by translating a rotational torque, such as with a thread; by applying a moment such as with a lever; or with applying direct axial force such as with a hammer. All three methods are routinely used in the attachment of GET”.
107. The expression "workshop improvement" refers to an alteration to an existing device which the person skilled in the art would have come to as a matter of routine, "proceeding along previous lines of inquiry and having regard to what was known or used" (Nicaro Holdings Pty Ltd v Martin Engineering Co 16 IPR 545).

108. A workshop improvement can occur where the prior art fully solves the identified problem and if the person skilled in the art would readily recognise a practical difficulty in that solution, and that practical difficulty would be readily overcome by the person skilled in the art appraised of the common general knowledge.
109. In the present case, there is nothing to suggest that the failure to secure the lock in the release position in the TORQ LOK would have been identified as a problem or a practical difficulty. While Mr Hughes states that axially moving a pin by applying a moment such as with a lever is routinely used in the attachment of wear members, he only states that he would have used a series of circumferential ridges if he “had been asked at the time to achieve the function of the TORQ LOK without using a thread”. His evidence does not provide any information as to why a person skilled in the art would have wanted in the first instance to modify the threaded locking arrangement of the TORQ LOK, when the TORQ LOK already provides a design of a useful lock for ease of replacement.
110. I am therefore not satisfied that, faced with the stated problem, there would have been any motivation to replace the threaded arrangement of TORQ LOK or that the use of a series of circumferential ridges to securely hold the locking pin in the release position would at once suggest itself to the person skilled in the art.
111. The claimed invention is inventive over the TORQ LOK prior art information.
112. In summary, I have found that the TORQ LOK prior art information would not have been ascertained and therefore does not form part of prior art for assessing inventive step. But even if I am wrong on this point and TORQ LOK could have been ascertained, the claimed invention would still be inventive over TORQ LOK.
ROBINSON and JONES
113. Ronneby did not provide any evidence or even submissions as to why the claimed invention is obvious over Robinson or Jones.
114. In relation to Robinson, Caterpillar submitted that it would be a simple and obvious adaptation to incorporate an inner ridge, or other means, to secure the locking plugs in the through-hole and that making the lock pivot about an axis that is parallel to the receipt of the base into the socket cannot be inventive as it does not contribute to overcoming any difficulty with prior locks.
115. Neither of these submissions is backed up by expert evidence. Mr Robinson, one of the inventors of the Robinson prior art has stated that the plugs “were not intended to be left in when the tooth was not installed, and to the best of my recollection, this possibility was not considered”.
116. I can see no motivation to modify the arrangement of Robinson to provide an inner ridge. In relation to the pivot axis, claim 5 specifically recites that the pivotal movement of the lock is about a pivot axis extending in a particular direction. The locking pin of Robinson rotates about an axis that is perpendicular to the claimed direction and there is no evidence to suggest that it would be obvious to modify Robinson so that its locking pin also extends in the same direction as the claimed invention. The locking system of Robinson is a totally different arrangement and would not work if the direction of the locking pin were to be changed. The claimed invention is therefore inventive over Robinson.
117. In relation to Jones, Caterpillar again submitted that while Jones does not expressly teach that the lock will be retained within the wear member in the release position, “such a modification would be a simple and obvious one for a skilled addressee to make” and that making the lock pivot about a different axis cannot be inventive. As discussed in relation to Robinson, without evidence to support these submissions, I cannot be satisfied that these features are obvious modifications. The claimed invention is inventive over Jones.
FAIR BASIS
Caterpillar’s Fair Basis Submissions
118. Caterpillar submitted that all of the claims apart from claims 2, 3 and 5 are not fairly based because the skilled addressee would understand that there is only a real and reasonably clear disclosure of a much narrower invention. They argued that the invention that is disclosed by the specification involves a particular design of a lock, as shown in figures 18-22, which includes a pivoting lock that can be pivoted by hand manipulation into and out of engagement with a corresponding depression in the base and that by not including these limitations independent claims 1, 6, 9, 13, 19 and 23 lack fair basis.
119. I do not find these submissions persuasive. As discussed under “Specification”, the lock aspect of the invention lies in the integral nature of the connection of the lock to the wear member so that even in the release position, the lock remains secure with the wear member. The benefits of such a construction are stated to be less shipping costs, reduced storage needs and less risk of losing the lock. While the only arrangement of the lock structure as disclosed in the specification for achieving this result comprises a pivoting lock, that does not necessarily mean that the claimed invention should be restricted to such an embodiment. There is nothing in the opposed specification to suggest that securing the lock in the wear member in the release position was a well known goal and the applicant is therefore entitled to claim the invention more broadly in terms of the result to be achieved. In my view there is a “real and reasonably clear disclosure” of the claimed invention.
120. Caterpillar also submitted that the following dependent claims lack fair basis as they are directed to generalised concepts that are not disclosed in the specification.
·Claim 3 including the feature “the pivot axis extends generally in a direction generally parallel to the receipt of the base into the socket”.

·Claims 17, 24 including the feature “the base is a one piece member free of movable components”.

·Claims 10, 20 including the feature “the lock turns about an axis less than a full turn to move between the hold and release positions”.

121. In relation to claim 3, even though the specification states the “lock is swung about an axis that extends generally longitudinally for easy use and stability” from looking at the arrangement of figures 18-32, it is clear that the pivot axis can also be stated as extending in a direction that is generally parallel to the receipt of the base into the socket. This claim is therefore fairly based.
122. In relation to claims 17 and 24, looking at the base as shown in the figures, it is clearly evident that it is a one piece member that does not appear to have any movable components. These claims are therefore fairly based.
123. In relation to claims 10 and 20, again looking the preferred embodiment shown in figures 18-32, it is clear that the movement of the lock about the pivot axis is certainly less than a full turn. This claim is therefore fairly based.
Ronneby’s Fair Basis Submissions
124. Ronneby submitted that there is no “real and reasonably clear” disclosure of the terms “integrally connected” and “integrally secured” and therefore those claims that include these terms are not fairly based. They further submitted that the terms “free of threaded adjustment” and “moveable without a hammer” are inherently broad in that they attempt to carve out a specific exclusion, and claim everything else.
125. I have earlier found that these terms are clear in that they define that the lock is connected or secured to the wear member at the time of manufacture to form a unitary component with the wear member. There is a real and reasonably clear disclosure of these terms in the specification. I also agree with the applicant that the meanings of the terms “free of threaded adjustment” and “moveable without a hammer” are perfectly clear and there is nothing impermissible in having a negative limitation in a claim, provided its meaning is clear. While they may be termed a “negative” feature, they still further limit the scope of the claims they are appended to and are also supported by statements in the description. All of the claims are fairly based.
FULL DESCRIPTION
126. In their written submissions for the hearing, Ronneby also submitted that to the extent that the terms “integrally connected” and “integrally secured” means “integral”, the disclosure is not sufficient to allow the skilled addressee to produce something within independent claims 1, 9, 13 or 19 and their dependent claims.
127. However I have already found that these terms are clear and that they do not mean that the wear member and lock are formed as a single piece, but rather as two separate components which are subsequently secured together. The specification includes a best method of performing this invention that could be readily understood and put into practice by the skilled addressee. There is no issue in relation to the sufficiency of the disclosure and this challenge to the opposed specification fails.
PRIORITY DATE
128. Caterpillar also ran the argument that for the same reasons that they pressed for lack of fair basis, the consequence of any lack of fair basis is also that the claims are not entitled to an earlier priority date and that the claims are therefore anticipated by the parent application AU 2007241122.
129. I find this argument a bit strange as I fail to understand how a document that does not provide real and reasonably clear disclosure of the claimed invention can then provide clear and unmistakeable directions to the claimed invention for the purposes of prior publication. In any case I have already found that the claims are fairly based and also the description and drawings of the parent are the same as that of the child. Therefore this argument must necessarily fail.
130. None of the opponents have relied on any other document that was published after the claimed priority date of 30 March 2006. Therefore nothing hinges on this date and consequently I do not see the need to make any determination on the priority date issue.
OTHER GROUNDS
131. No submissions were made by Catterpillar or CQMS in relation the grounds of Manner of Manufacture and Utility. I can also find no basis to reject the claimed invention on these grounds.
CONCLUSION
132. All three oppositions fail. The claimed invention is novel, inventive, clear, fairly based, sufficient and a manner of manufacture.
COSTS
133. In proceedings such as these it is usually the case that costs follow the event. None of the parties have provided any reasons to vary that approach on this occasion. All three oppositions have been unsuccessful. I therefore award costs according to Schedule 8 against each of the opponents, namely Ronneby Road Pty Ltd, CQMS Pty Ltd and Caterpillar Inc.
R Subbarayan
Delegate of the Commissioner of Patents