S.D.S. Digger Tools Pty Ltd v Sandvik AB

[1996] APO 53

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 PASDONNAY PTY LTD 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.

Failure to appear at a hearing does not constitute withdrawal of the opposition. Evidence did not establish any of the grounds relied on.  In particular the evidence did not establish that the claimed invention was an obvious development of the use of  shrouds with tricone roller bit assemblies. 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 Pasdonnay Pty Ltd 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.

Pasdonnay Pty Ltd (hereafter referred to as “Pasdonnay”) 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.  All evidence was served by 19 February 1996 after both parties had been granted a number of extensions of time.  I note for the sake of completeness that application 638571 is also the subject of an opposition by Sandvik AB (“Sandvik”).

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 Pasdonnay and Sandvik were originally set down for a joint hearing in Canberra on 24-26 July 1996.  The hearing was postponed at the request of Mr E J Harwood, the patent attorney for Pasdonnay, and reset for 21-23 August 1996.  Mr Harwood subsequently advised that the parties to the Pasdonnay opposition had settled and would not be attending the rescheduled hearing.  However, in the absence of a written notice filed pursuant to regulation 5.15, this failure to attend does not constitute withdrawal of the opposition.  Consequently, and as stated in paragraph 7.5 of the Manual of Practice and Procedure (Vol 3), I still have a duty to consider the evidence filed and determine the opposition.

As application 638571 was filed prior to but advertised 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, with the exception of 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 known as Cherlor Air Drillers 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 filed in this matter comprises declarations made by the following persons:

Evidence-in-Support

John Lynton Shelley -  Exhibit JLS1
   Jamie Malcolm Wallis -  Exhibits JMW1 to JMW5
   Phillip John Whitehurst -  Exhibits PJW1 to PJW3
   Philip Bruce Roddis - Exhibit PBR1
   Phillip John Kitson
   Raymond Malcolm Dela Rosa -  Exhibits RMDR1 and RMDR2
   Errol John Harwood - Exhibits EJH1 to EJH3
   Robert A.M. Jones
   Ian Graeme Rear -  Exhibits IGR1 to IGR5
   Bevin Ronald Ritchie -  Exhibits BRR1 to BRR18
   Alan Bennett
   Gavan Andrew Redmond
   Lionel Bevan Simpson -  Exhibits LBS1 to LBS4

Evidence-in-Answer

Werner Giehl
   Malcolm Bicknell McInnes
   John Dewar
   Ronald Leslie Huddy
   Kenneth Richard Wilkes
   Frederick Graham Moir -  Exhibits FMG1 to FMG3

Evidence-in-Reply

Lionel Bevan Simpson -  Exhibit LBS5
   Jamie Malcolm Wallis
   John Elsby -  Exhibit JE1
   Brain Thomas Sanfead -  Exhibit BTS1
   Phillip John Whitehurst
   Bevin Ronald Ritchie -  Exhibit BRR19
   James Andrew McElroy -  Exhibit JAM-1
   Allan Keith Ding
   Greg Botica
   Ian Graeme Rear -  Exhibit IGR6
   Alexander Joseph Mahony

Written submissions by Mr BJ Hess of counsel were also filed on behalf of Digger Tools, but none were filed on behalf of Pasdonnay.

I will refer to the evidence and submissions where necessary in this decision.

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 effects 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 no submissions have been  made directly on behalf of Pasdonnay in support of the ground of prior claiming.  However I note that Exhibit EJH1 is a copy of a declaration made by Robert James Strickland, patent attorney with Griffith Hack & Co, in respect of the Sandvik opposition in which Mr Strickland argues that the invention as claimed is the subject of the claims of the Giehl application.  I do not agree with Mr Strickland on this point particularly as the Giehl application does not claim a cover which is equivalent to the transmission sleeve of the opposed application as he has asserted.  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

In his first declaration dated 21 April 1994 Mr Simpson states that on 14 May 1987 Cherlor Air Drillers Pty Ltd commenced a drilling contract in New South Wales under his supervision.  Mr Simpson further states that he was requested to test the performance of a prototype reverse circulation percussive hammer supplied to him at the drilling site by Mr Giehl.  This evidence is corroborated by Mr Shelley and Mr Kitson, and uncontested by Digger Tools.

According to Mr Simpson (and Mr Kitson), the prototype hammer did not perform satisfactorily and was as a consequence modified by mounting a shroud to the lower end of the hammer which extended over the drill bit.

Even if I were to accept that the prototype hammer was modified in this manner - and I note here the contrary evidence of Mr Giehl that “there was nothing that related to a shroud at that time” - no evidence has been provided of the exact details of the shroud used to modify the hammer.  Mr Simpson states that the shroud was formed “by machining a cylindrical ring from the piston case of a discarded downhole hammer” which falls well short of establishing that the shroud (if it actually existed) incorporated all features of the transmission sleeve according to the invention claimed by the opposed application.  

In opposition cases it is normally expected that proof of prior user should be very clear (Seiller’s Application, [1970] RPC 103). In the present circumstances although Mr Simpson has asserted that he used a shroud with Mr Giehl’s prototype hammer during May, 1987, there is no clear and conclusive proof of prior use by him 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 v Vicarr 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 one of the various patent specifications relied on by Pasdonnay.

Having reviewed these documents, I agree with Mr Hess that there is 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 Pasdonnay 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 law of obviousness under the 1952 Act is laid down in Minnesota Mining and ManufacturingCo v Beiersdorf (Aust) Ltd, (1980) 144 CLR 253). To establish obviousness where a combination invention is involved it must be shown that each of the integers which make up that combination is common general knowledge in the field in question, and that it would have been obvious to a non-inventive skilled worker in the field to not only select the separate integers which make up that combination, but also to select the particular combination of those integers.

In the present case Pasdonnay 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

In my view the evidence presented on behalf of Pasdonnay in support of this particularised matter fails to show that it would have been obvious to arrive at the combination of features claimed by claim 1 or claim 7, and tends rather to isolate a particular feature of the combination claimed and then allege that the addition of that feature can be shown to be obvious.  This ex post facto dissection of an invention must be avoided in any obviousness consideration (Minnesota Mining and Manufacturing, supra).

This approach is best illustrated by the declaration of Mr Sanfead filed as evidence-in-reply.  Mr Sanfead, who interestingly is named as a co-inventor of the claimed invention, declares as follows:

“9.4 The development of the device which is the subject of the claims ... arose from a difficulty which had been experienced with downhole reverse circulation hammers being marketed by SDS ...

9.5 As a preliminary step to overcome this problem a product was developed which was called a “compensating ring” which was placed around the outer sleeve of the hammer between the outer sleeve and the drive sub and which served to provide an enlargement around the outer sleeve in order to provide a seal between the hammer and the sidewall of the bore hole.

9.6 This arrangement seemed to resolve some of the difficulties which were experienced at that time ...

9.7 The device which is the subject of the above application [viz. the opposed application] arose from a thought by me that it may be appropriate to reverse the orientation of the compensating ring ...

9.8 This thought arose as a result of my direct involvement with the utilisation of similar shrouds with reverse circulation tricone drilling systems and was for a similar purpose.”

The so-called “compensating ring” to which Mr Sanfead has referred is the subject of AU 43643/89 (see Exhibits EJH3 and IGR3).  The compensating ring marked as item 98 in Fig 2 is of identical form to the transmission sleeve of the claimed invention.  However, apart from the fact that the compensating ring is disposed in the opposite direction to the claimed transmission sleeve with respect to the drill bit, no evidence has been provided to establish that AU 43643/89 or compensating rings of the type disclosed by this document are matters of common general knowledge.

Furthermore, Mr Sanfead is an inventor in the field and thus his evidence as a “non-inventive worker” must be viewed with caution.  In any case Mr Sanfead does not explain why he thought it “may be appropriate” to reverse the orientation of the compensating ring and as a result fails to demonstrate that the non-inventive skilled worker would as a matter of routine have reversed the direction of the compensating ring relative to the drill bit to arrive at the claimed invention.  Also,  his statement regarding the utilisation of “similar” shrouds with reverse circulation tricone drilling systems is inconsistent with the evidence put forward by Pasdonnay regarding the nature of the shroud arrangements used in association with reverse circulation rotary tricone bits.

There seems no question that tricone roller bit assemblies having a drill bit skirt or “shroud” were well known in the field before the earliest priority date of the claims.  However, the shrouds discussed in evidence with reference for example to the drawings of Exhibits PJW1, JMW1 and RMDR1, which are said to be representative of the shroud arrangements commonly used with tricone roller bit assemblies, have not been established by Pasdonnay as being equivalent in nature to the transmission sleeve of the claimed invention.  In my opinion the evidence for Pasdonnay in the main suggests that there may be “similarities” between the shroud arrangements used with tricone roller bit assemblies and the transmission sleeve of the claimed invention as regards their intended purpose, however, the evidence overall is inconclusive on this issue since it is in turn derived from conflicting statements on whether or not the manner of operation of such assemblies differs from that of percussive hammers.

There is one further point worth mentioning here.  Given the evidence of Mr Rear and Mr Redmond that reverse circulation percussive hammers only came into the market place in “approximately 1988”, I am left in some doubt as to whether percussive hammers per se may be regarded as part of the common general knowledge at the relevant time.  Even assuming this to be the case, the statement by Mr Rear that

“... early forms of reverse circulation hammers manufactured by my company [viz. Pasdonnay] were provided with shrouds of a similar form to those which had been used with tricone bits ...

The shrouds were then used in commercial drilling projects during the period 1989-1990.”

does not establish that the use of shrouds of this (or any other) form with reverse circulation percussive hammers was itself common general knowledge.

In view of the foregoing, the evidence put forward by Pasdonnay does not conclusively establish that the claimed invention is an obvious development of the use of a shroud with a tricone drill bit assembly. 

. 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

As submitted by Mr Hess, no evidence whatsoever has been filed which deals with these alleged activities.  

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

. 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  

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 and Manufacturing, 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.  Mr Jones asserts that the World Oil catalogue is “an essential tool for any company which is involved in the manufacture or marketing of equipment for use with the oil or mining industry” which fails to show that this catalogue is widely read amongst those employed in the drilling industry, and in any event I note that the fact that a document may have been available on a library shelf or in circulation does not mean that it can be regarded as common general knowledge (Riekie & Anor v M J McGrath Pty Ltd & Anor, (1986) AIPC 90-311).

. The activities of the Digger Tools 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 and manufactured by Entech Industries

As already stated in this decision, none of the patent specifications referred to above have been shown to constitute matters of common general knowledge.  According to Mr Ritchie, the hammer which is the subject of AU 15048/88 was marketed in Australia under the name “Samplex” before the relevant date.  Mr Rear makes a similar assertion regarding the compensating ring of AU 43643/89.  Assuming for the moment that these documents disclose a transmission sleeve in accordance with the claimed invention contrary to my earlier findings on that issue, no evidence has been provided to establish that either of the marketed products form part of the body of knowledge of all those in the art.

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 of alleged insufficiency and ambiguity of disclosure.  Having reviewed the description and claims in light of the matters raised I have found nothing which would give rise to an objection under section 40.  In particular I believe that the nature of the invention and how it is to be performed would be readily apparent to a skilled addressee, and in this regard it is significant to my mind that a number of  Pasdonnay’s own expert witnesses state that they have read and understood the specification of the opposed application.

conclusion

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

In actions before the Commissioner, costs usually follow the event.   As stated in paragraph 7.6 of the Manual of Practice and Procedure (Vol 3), it is common practice for a withdrawing party to negotiate with the other party prior to the withdrawal for each party to bear their own costs.  In the present case the opposition has not been formally withdrawn, nor is there anything before me to suggest that the parties have agreed to bear their own costs.  Accordingly, I consider that the appropriate course of action is for me to award costs against Pasdonnay 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 :  Wray & Associates, Perth