S.D.S. Digger Tools Pty Ltd v Pasdonnay Pty Ltd

[1996] APO 52

official notice

decision of a delegate of the commissioner of patents

Application  :          No. 638571 in the name of S.D.S. DIGGER TOOLS PTY LTD

Title:          Transmission Sleeve for a Down Hole Hammer

Action:          Opposition by SANDVIK AB under Section 59 of the Patents Act 1952

Decision:          Issued            .

Abstract

Opposition under Section 59 of the Patents Act 1952 - prior claiming, prior user, lack of novelty, obviousness and non-compliance with Section 40 raised.

Invention relates to a transmission sleeve for a reverse circulation down hole hammer of the percussive type having certain dimensions and wear characteristics whereby to maintain a seal between the bore of the hole being drilled and the drill tube throughout the life of the drill bit.

Instances of alleged prior use referred to in the evidence but not particularised discussed having regard to public interest considerations.  Issues raised in relation to Section 40 did not detract from the overall meaning of the specification.  Evidence did not establish any of the remaining grounds relied on.  Opposition dismissed.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 638571 by S.D.S. Digger Tools Pty Ltd and opposition by SANDVIK AB under Section 59 of the Patents Act 1952

background

Patent application 638571 by  S.D.S. Digger Tools Pty Ltd (formerly known as D.T.A. Pty Ltd, and hereafter referred to as “Digger Tools”) was  filed on 24 April 1991 claiming priority from provisional specifications PJ 9817 and PK 3850.  The application was advertised accepted on 1 July 1993.

Sandvik AB (hereafter referred to as “Sandvik”) filed a notice of opposition to the grant of a patent on the application on 1 October 1993, and a statement of grounds and particulars on 31 December 1993.  Service of evidence in support of the opposition was eventually completed on 30 June 1994, and evidence in answer on 15 December 1995.  I note for the sake of completeness that the latter was also used as evidence in answer in respect of  a second opposition to application 638571 by Pasdonnay Pty Ltd (“Pasdonnay”).  Sandvik gave notice of intention to serve evidence in reply, but did not serve any evidence within the period allowed, that is, by 15 March 1996.

Following a request for directions in respect of the parallel opposition proceedings by Mr Craig L Vinall, the patent attorney for Digger Tools, the oppositions by Sandvik and Pasdonnay were originally set down for a joint hearing in Canberra on 24-26 July 1996.  On 31 May 1996, Mr R J Strickland, the patent attorney for Sandvik, advised the office that “this opponent will not be represented at any hearing, including a telephone hearing, and will also not be making written submissions.”

The hearing was postponed at the request of  Mr E J Harwood, the patent attorney for Pasdonnay, and rescheduled for 21-23 August 1996.  However on 19 August 1996 Mr Harwood advised that the parties to the Pasdonnay opposition had settled and would not be attending the rescheduled hearing.  In the event, a hearing to determine the Sandvik opposition was held in Canberra on 21 August 1996.  Digger Tools was represented by Mr B.J. Hess of counsel, assisted by Mr Vinall.

As application 638571 was filed prior to but advertised accepted after the commencement of the Patents Act 1990, section 59 of the Patents Act 1952 applies to the grounds of opposition but Chapter 5 of the Patent Regulations 1991 applies in relation to the opposition proceedings.

The specification

The specification states that the invention relates to a sacrificial transmission sleeve for a reverse circulation down hole hammer of the percussive type actuated by a fluid such as compressed air.

In reverse circulation drilling an annular clearance (typically 3 mm) is provided between the drill tube and the bore of the hole being drilled.  The clearance must be kept relatively small so that rock cuttings are forced from the bottom of the hole through a passageway in the drill itself to the surface by the action of compressed air exhausted around the sides of the drill bit and at the cutting face of the bit.

To maximise the recovery of rock sample from the bottom of the hole being drilled, the maximum outside diameter of the drill bit is in practice made as close as possible to the maximum outside diameter of the drill tube.  However, as the cutting face of the drill bit bores out the hole, it wears down and becomes smaller in diameter.  If a drill bit is used with a maximum outside diameter greater than that of the drill tube, the clearance between the drill tube and the bore of the hole is increased.  This arrangement leads to longer bit life but increases the leakage of air into the annular clearance, reduces the rate of rock sample recovery and results in higher sample contamination.

According to the specification, the invention addresses the above-mentioned problems by providing a sacrificial transmission sleeve designed to effect a seal between the bore of the hole being drilled and the drill tube , and to wear down at a similar rate to the drill bit thus maintaining the seal throughout the life of the drill bit.  The seal created by the transmission sleeve is said to result in an acceptable sample recovery rate without either increased sample contamination or increased air consumption.

The specification ends with fourteen claims in all, two of which, claims 1 and 7, are independent and read as follows:

“1. A sacrificial transmission sleeve when used with a reverse circulation down hole hammer of the percussive type actuated by a fluid under pressure, including an outer sleeve, a drill bit retaining means held in the  outer sleeve, and a drill bit retained in the retaining means and extending forwardly therefrom; the transmission sleeve comprising a body and an annular flange, the body having a first inner surface and a second outer surface, the diameter of the second outer surface being greater than that of  outer sleeve (sic) and substantially the same as that of the drill bit, the transmission sleeve located near an end of the down hole hammer proximate the drill bit, the annular flange being of diameter (sic) substantially the same as the drill bit and extending from the body towards the drill bit, and the wear characteristics of the transmission sleeve being similar to that of the drill bit, whereby, in use, the transmission sleeve wears at a similar rate to the drill bit.

7. A reverse circulation down hole hammer of the percussive type actuated by a fluid under pressure comprising a drill bit retained by drill bit retaining means, the retaining means being held in an outer sleeve and a sacrificial transmission sleeve located longitudinally between the outer sleeve and the drill bit retaining means, the transmission sleeve comprising a body and an annular flange, the body having a first inner surface and a second outer surface, the diameter of the second outer surface being greater than that of outer sleeve (sic) and substantially the same as that of the drill bit, the transmission sleeve located near an end of the down hole hammer proximate the drill bit, the annular flange being of diameter (sic) substantially the same as the drill bit and extending from the body towards the drill bit, and the wear characteristics of the transmission sleeve being similar to that of the drill bit, whereby, in use, the transmission sleeve  wears at a similar rate to the drill bit.”

All other claims, except omnibus claims 13 and 14, are dependent on either claim 1 or claim 7.  The only dependent claims I need to note here are claims 5 and 11 which provide:

“5. A sacrificial transmission sleeve according to claims 1 or 2, in which the transmission sleeve and the drill bit retaining means are integrally formed with one another.

11. A reverse circulation down hole hammer according to claim 7 or 8, wherein the transmission sleeve and the drill bit retaining means are integrally formed with one another.”

Statement of grounds and particulars

The statement of grounds and particulars sets out the following grounds of opposition:

1. That the invention, so far as claimed in any claim, is the subject of a claim of earlier priority date in the complete specification of another application for a standard patent lodged in Australia.

Australian Patent Application No 77559/91 is cited under this ground.

1. That the invention, so far as claimed in any claim, was published in Australia before the priority date of that claim.

The particulars under this ground allege prior use of the claimed invention by a drilling company in May, 1987. 

1. That the invention, so far as claimed in any claim, was obvious and did not involve an inventive step, having regard to what was known or used in Australia, on or before the priority date of that claim.

The particulars under this ground allege the use  and sale of a shroud or compensating ring of the same form as the claimed invention in association with reverse circulation rotary tricone bits or reverse circulation percussive hammers.  The particulars also refer to a number of patent and other published documents.

1. That the invention, so far as claimed in any claim, was, before the priority date of that claim, otherwise not novel in Australia.

The particulars under this ground refer to the alleged prior use and the patent documents identified in 1 and 3 above.

1. That the complete specification does not comply with the requirements of section 40.

A number of alleged defects in the specification (including the claims) are listed under this ground.

EVIDENCE

The evidence in support comprises:

. a first declaration by Robert James Strickland, the patent attorney for Sandvik, which exhibits
  various Australian and United States patent documents identified under the opposition grounds of
  prior publication, obviousness, and lack of novelty.

Among other things, Mr Strickland compares the features claimed by claim 1 of the opposed
  application against those claimed by claim 1 of Australian patent application 77559/91 and
  asserts, based on that comparison, that “the features of the transmission sleeve defined in
  Claim 1 of the opposed application are prior claimed by Australian patent application 77559/91.”

. a second declaration by Mr Strickland which confirms the accession dates of the United
  States patent documents exhibited with his first declaration.

. a declaration by Denis Bosquet who states that he has been employed since the “mid-1970’s”
  with various companies involved in the down hole drilling industry, and that he is familiar with
  both what are known as reverse circulation down hole rotary drills and reverse circulation
  percussive hammers.

I would add here that there is nothing on file to suggest that Sandvik wished to also rely on any of the evidence served in the Pasdonnay opposition.

The evidence in answer comprises declarations by:

. Werner Giehl
. Malcolm Bicknell McInnes
. Ronald Leslie Huddy
. Frederick Graham Moir, with Exhibits FGM1 to FGM3
. Kenneth Richard Wilkes
. John Dewar
. Roland Georg Riese
. Raymond Malcolm Dela Rosa

I will refer to the evidence where necessary in this decision.  However, I note from the opposition correspondence file that the declaration by Mr Dela Rosa was served on 15 December 1995 but did not include the date on which the declaration was signed and, consequently, does not strictly conform with the requirements of regulation 22.13(4).  The correspondence file also includes a declaration by Peter Gilbert Seaton, the witness to the declaration by Mr Dela Rosa, confirming the date on which the undated declaration was signed.

It is important to remember that in proceedings such as these the Commissioner is acting as an administrative tribunal and is therefore entitled to act on any material which is logically probative, even though it might not be admitted in a court of law, provided that the rules of natural justice are applied (see  The Minister for Immigration and Ethnic Affairs v Pochi, 31 ALR 666).

In the present case it is clear that the undated declaration by Mr Dela Rosa could have a bearing on the outcome of this opposition, and has not disadvantaged Sandvik in any way.  Indeed in a letter dated 8 January 1996 Mr Strickland advised that he was prepared to accept service of the undated declaration.  Accordingly, I consider that the appropriate course of action is for me to admit the declaration of Mr Dela Rosa as evidence.

As mentioned earlier, no evidence in reply was filed.

decision

Prior Claiming

Australian patent application 77559/91 (“the Giehl application”) claims priority from provisional specification  PJ 9682 and has an earlier priority date than that of the opposed application.  The specification of the Giehl application includes eleven claims, of which claim 1 reads as follows:

“1. A drill head assembly including a drill bit and cover means, the said head assembly characterised by a cutting face at one end of the drill bit, the said drill bit including a plurality of channels extending between air communicating inlets and the said cutting face, at least one collection duct passing substantially axially through the said drill bit and adapted for collection of air from the said cutting face, and the said cover means covering air inlet proximal portions of the said open channels so as to direct air flow to the said cutting face.”

Claims 2 to 5 are dependent on claim 1.  Claims 2 and 5 provide:

“2. A drill head assembly as in claim 1 including the said cover means being part of a drill chuck sub adapted to affix to a drill stem.

5. A drill head assembly as in claim 2, 3 or 4 including interlocking means adapted to prevent rotation of the cover means relative to the drill bit, the cover means being substantially tubular a maximum diameter of which is substantially the same as the maximum diameter of the said cutting face ...”

The Giehl application is directed to a drill head assembly for use in a percussive drilling arrangement.  The assembly described with reference to the accompanying drawings includes a drill bit and a drill chuck sub, or drill bit retaining means. The drill chuck sub is affixed to a drill stem so that rotation of the drill stem is reflected in rotation of the drill bit.  The drill chuck sub is held in an outer sleeve, and includes a cover or shroud  to form a structure not unlike that described with reference to Fig. 3, and claimed by claims 5 and 11, of the opposed application.

Nevertheless, in Kromschroder (G) AG’s Patent, [1960] RPC 75, it was held that the comparison necessary to establish an objection based on prior claiming must be made between (and limited to) the claims in the relevant specifications; that is to say, it does not suffice to show that what is claimed in the specification in suit as a subject matter for protection is to be found somewhere comprehended or described in the earlier specification.

In the present case I cannot agree with Mr Strickland that the invention as claimed is the subject of the claims of the Giehl application.  In particular it is clear that the Giehl application does not claim a cover which is equivalent to the transmission sleeve of the opposed application as asserted  by Mr Strickland in his evidence in support.  The cover per se does  not comprise a body and an annular flange, but is simply tubular, and there is no suggestion that the wear characteristics of the cover are such that it is consumed in drilling at a similar rate as the drill bit.

Accordingly, I do not find prior claiming to exist.

Prior User

The standard of proof required to establish prior user is succinctly stated by Graham J. in Seiller’s Application, [1970] RPC 103 at 106, as follows:

“In my judgement it is necessary that proof of prior user in opposition cases should be very clear.  Normally, in the absence of cross-examination, this will involve corroboration of a mere statement as to recollection in a declaration, particularly where the time interval involved is considerable.  Such corroboration is often best found in documents contemporary with the fact to be proved.”

and I add that in proceedings before the Commissioner the standard of proof is the civil standard on the balance of probabilities (see Dunlop Holding Ltd’s Application, [1979] RPC 523), and an opponent or informant carries the onus of establishing the grounds alleged.

A number of instances of prior use are alleged in the present case.  However, the evidence put forward by Sandvik does not refer to any of the alleged activities particularised under the ground of prior use in the statement of grounds and particulars, but rather is essentially concerned with establishing the nature of the common general knowledge in the relevant art.

Consequently, I agree with Mr Hess that, in the absence of appropriate evidence, none of the alleged instances of prior use particularised in the statement can be sustained.  Nevertheless, the evidence as a whole does raise some issues which prima facie are relevant to the allegation of prior use .  In opposition proceedings the Commissioner has a role to protect the public interest, and thus could consider those issues in a bar to sealing action before the  opposed application proceeds to sealing.  However, to expedite matters, I believe the most appropriate course of action is to consider those issues now.

In para 15 of his first declaration Mr Strickland refers to a copy of a drawing (RJS9) which he says represents a drill bit “sold for many years by Drill Systems Inc. of the U.S.A., and which I am informed was publicly used in Australia from at least the early 1970’s ...”  The drawing in question shows various sectional views of what Mr Bosquet and Mr McInnes (for Digger Tools) appear to confirm is known as a reverse circulation tricone or roller cone drill bit assembly.  The drawing is in fact headed “Drill Systems type wear wear sleeve for tricone RC drilling”.

This drawing also forms an exhibit (DP1) to the declaration by Mr Bosquet who states that the drill bit assembly depicted had been sold for many years and “is typical of the drill bits with which I have had knowledge and have worked with since the early 1970’s at various drilling sites around Australia ...”

Mr Strickland has not established his qualifications to provide expert testimony of what the drawing discloses, and his evidence regarding the alleged use of the device shown in the drawing is based entirely on information received from an unknown source.  I therefore consider Mr Strickland’s evidence to be of little probative value.  Whilst the evidence of Mr Bosquet provides some support for that of Mr Strickland, it is itself deficient in the absence of documentary evidence, of the type referred to in Seiller’s Application, supra, to provide the necessary degree of corroboration to establish prior use.

Even if the evidence put forward by Sandvik was sufficient to establish that prior use of the device shown in the drawing had taken place before the relevant date, I do not consider that this would in turn establish prior use of the claimed invention. 

A number of features represented in the drawing are annotated by the use of terminology paralleling claims 1 and 7 of the opposed application.  Although the drawing has no accompanying description, and there is no mention of its origin, I am prepared to accept, given his experience and the absence of contrary evidence, the statement made by Mr Bosque that the drill bit assembly illustrated by the drawing comprises the features as annotated, ie., an outer sleeve, a drill bit retaining means or sub, a drill bit retained in the retaining means, and a transmission sleeve.

However, it is important to remember that the drawing is concerned with a tricone rotary drill bit assembly, and not a percussive hammer assembly as claimed by the opposed application (this point was conceded by Mr Bosquet).  Furthermore, the feature labelled as a “transmission sleeve” in the drawing does not, as required by the claims of the opposed application, comprise a body and an annular flange, and there is no evidence to establish, to the necessary degree of certainty, that the wear characteristics of the sleeve are similar to that of the drill bit.

In addition to the above, Mr Giehl states in his evidence in answer that the first prototype of a reverse circulation percussive hammer designed by him was demonstrated in “about 1985”.  As a result of difficulties experienced during the demonstration, the hammer was modified to improve its operation, and Mr Giehl says that this modification constituted the introduction of the concept of a shroud “which everybody calls it now ...” 

Apart from a brief reference to a piece of pipe welded onto the end of the drive sub, this evidence does not provide me with any structural information about Mr Giehl’s modified hammer which I can compare with the claims of the opposed application.  Mr Giehl also refers to an exhibition in Sydney in “about 1987” where his hammers were on display, but does not establish whether any of those hammers incorporated the shroud concept previously mentioned.

In view of the foregoing, I find that the evidence as a whole is insufficient to establish prior use of the claimed invention.

Novelty

In deciding whether a claimed invention lacks novelty, the courts have used the so-called reverse infringement test.  For example, in Meyers Taylor Pty Ltd  vVicarr Industries Ltd, (1977) CLR 228, the test was stated by Aiken J at page 235 as follows:

“ 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.”

In Rodi Wienenberger AG v Henry Showell Ltd, [1969] RPC 367 at page 391, infringement of a claim is said to occur when “each and every one of the essential integers” of that claim have been taken. Thus in order to decide whether or not the claimed invention lacks novelty, I must determine whether or not all the essential features of the claims are disclosed in any of the various patent specifications included with Mr Strickland’s first declaration. However, as a preliminary issue I note that the copy of AU 40438/89 filed as evidence has not been translated into English and, consequently, is of little assistance in this matter.

Having reviewed these documents, there is in my view no disclosure whatsoever of a percussive-type down hole hammer having a sacrificial transmission sleeve as claimed by claim 1 or claim 7 of the opposed application.

AU 15048/88 and US 4765418, for example, disclose an arrangement wherein the drill bit retaining means includes at least one axially extending “sleeve” to transmit torque from the retaining means to the drill bit.  However, there is no suggestion that these sleeves are of the same size and form as the claimed transmission sleeve, or are sacrificial in nature.  US 4706764 discloses a drill bit retaining means wear collar to protect the hammer against the effects of abrasion, but again the collar is not of the same size or form of the claimed transmission sleeve, and there is no mention of its wear characteristics relative to the drill bit.  The hammer of US 3991834 includes a gauge sleeve having a body and an annular flange.  The annular flange does not, however, extend from the body towards the drill bit as required by  claims 1 and 7, nor is there any disclosure of a sleeve which wears at a similar rate to the drill bit.

On the basis of the foregoing, I conclude that none of the specifications relied on by Sandvik disclose all the essential features of claim 1 or claim 7 and, having regard to the reverse infringement test, I am unable to find that these documents deprive the claimed invention of novelty.

Obviousness

The question of obviousness under the 1952 Act involves an investigation of whether the claimed invention would have been obvious to a non-inventive skilled worker in the field equipped with the common general knowledge at the relevant priority date (Wellcome Foundation Limited v VRLaboratories (Aust) Pty Ltd, (1982) RPC 343). Thus in considering obviousness I have to take into account what has been established as being common general knowledge in the field of the invention in Australia.

In the present case Sandvik alleges that the claimed invention is obvious by virtue of the following particularised matters:

. Widespread use of a shroud of the same form as the claimed sacrificial transmission sleeve in
  association with reverse circulation rotary tricone bits

I have already found that the evidence of Mr Strickland or Mr Bosquet does not establish use of the tricone  roller bit assembly represented in the drawing exhibited by them.  However, on the basis of the evidence of Mr Bosquet, Mr Giehl and Mr Dela Rosa, together with the evidence in answer presented by Mr Huddy, Mr Wilkes and Mr Moir - all of whom are in my view qualified to comment on the state of the common general knowledge in the field of the invention - there seems no question that tricone drill bit assemblies per se were well known in the field before the earliest priority date of the claims.    Furthermore, it appears from statements made in particular by Mr Bosquet, Mr Dela Rosa and Mr Wilkes that the use of a cover or shroud in conjunction with such assemblies may also be regarded as part of the common general knowledge at the relevant time.

Nevertheless, where a combination patent is involved, as in the present case, it must be shown that it would have been obvious to not only select the separate integers which make up that combination, but also to select the particular combination of those integers (Minnesota Mining and Manufacturing Co v Beiersdorf (Aust) Ltd, (1980) 144 CLR 253), and I note in this regard that the evidence before me fails to establish that:

. the use of a shroud which is equivalent in character to the sacrificial transmission sleeve of the
  claimed invention in association with tricone drilling assemblies; and

. the use of a shroud of any form in association with percussive down hole hammers

are matters of common general knowledge.  Consequently, I do not accept the argument put forward by Sandvik that the claimed invention is an obvious development of the use of a shroud with a tricone drill bit assembly.  Further to this, the assertion by Mr Bosquet that:

“... the use of the wear sleeve in the tricone drill bit was so well known in Australia in the drilling industry that if required it would have lent itself to ready adaption (sic) to a reverse circulation down hole percussive hammer to perform its well known functions as a wear sleeve.”

stands uncorroborated, and is suggestive of an ex post facto dissection of the claimed invention which has been criticised on many occasions by the courts (for example see Palmer v Dunlop Perdriau Rubber Company Limited, (1937) 59 CLR 30).

. Use of a shroud of the same form as the claimed sacrificial transmission sleeve in association
  with reverse circulation percussive hammers at Rhonda Colliery during March 1989, and
  subsequent purchase and use by Mitchell Drilling Contractors

No evidence whatsoever has been filed which deals with these alleged activities.  In the absence of any supporting evidence I accept the evidence of  Digger Tools which is put succinctly by Mr Giehl as follows:

“... there was no commercial use or public release of information of the shroud and its application to a reverse circulation down hole hammer until after at least 26th April 1990 [viz. the earliest priority date of the claimed invention].”

. The disclosure contained in the reference “Composite Catalogue of Oil Fields Equipment and
  Services” 3rd Edition 1984-85 Volume 4 - published by World Oil, a Gulf Publishing Company
  - 1984 - Pages 7602 and 7603; and

. The disclosures contained in the patent specifications relied on to support the allegation of lack
  of novelty

I note at the outset that the World Oil catalogue was not put into evidence and so cannot now be relied on by Sandvik to support this ground of opposition (Coal Corporation of Victoria v David William Hinkley et al, an unreported decision of the Commissioner of Patents dated 17 September 1993 on patent application 621944).

Furthermore, it is clear from reported cases that documents in existence, or other matters of public knowledge, at the priority date cannot be considered in the determination of the obviousness question unless they are proven as forming part of the common general knowledge amongst those in the trade at that time (see for example Minnesota Mining & Manufacturing v Beirsersdorf, supra).  There is no evidence before me to establish that any of the documents mentioned above were part of the common general knowledge  in the field of the invention. 

. The activities of the applicants before the priority date of the opposed application in the
   manufacture and sale of compensating rings for use with reverse circulation hammers of the
   form disclosed in AU-A-43643/89; and

. The sale of recirculation percussive hammers incorporating shrouds of the form disclosed in
  AU-A-15048/88 and US 4765418

The evidence for Sandvik does not deal with any of these alleged activities, or put forward a copy of  AU 43643/89.  Furthermore, and given my findings earlier in this decision, AU 15048/88 and US 4765418 do not constitute matters of common general knowledge or even disclose the claimed invention.

Accordingly I find that the evidence before me is not sufficient to establish that the claimed invention is obvious..

Section 40

The particulars listed under this ground identify a number of instances where the description and claims allegedly lack sufficiency or clarity.  As pointed out by Mr Hess, a specification is addressed to a person skilled in the field of the invention.  He then submitted that this ground could not be sustained in the absence of supporting evidence from a skilled addressee.  I do not agree with this submission.  Although no evidence has been produced to show that Mr Bosquet, Sandvik’s own expert in these proceedings, has experienced any difficulty in understanding  the specification of the opposed application, I note from Cooper Industries Inc v Metal Manufacturers Limited, 29 IPR 106, that issues involving section 40 do not necessarily require the support of expert evidence. Indeed it is not uncommon for a hearing officer of his or her own volition to make an adverse finding on a section 40 matter even where the opponent has omitted to make any mention of it.

Having considered the section 40 matters which have been particularised in the present case, I am satisfied that they do not relate to defects which detract from the overall meaning of the specification of the opposed application, and  I note here with interest the evidence of Mr Strickland  in paragraph 2 of his first declaration where he states “... and having read the specification, and despite some parts of the wording therein which is not clear and/or ambiguous, I understand the subject matter of the specification.”

I therefore find that the specification complies with the requirements of section 40.

conclusion

I have found that Sandvik has not succeeded on any of the grounds relied on and, accordingly, I dismiss the opposition.  I have also found in a separate decision that the Pasdonnay opposition is unsuccessful.  Consequently, I direct that application 638571 proceed to sealing, subject to any appeal being filed.

In accordance with the general principle that costs follow the event, I award costs against Sandvik and in favour of Digger Tools.

O.L.Haggar
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Madderns, Adelaide

Patent attorneys for the opponent :  Griffith Hack & Co, Melbourne