Sandvik Aktiebolag v Boart International Limited
[1987] APO 2
•13 January 1987
In the Matter of the Patents Act 1952
‑ and ‑
In the Matter of Patent Application No. 542437 by SANDVIK AKTIEBOLAG
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In the Matter of Opposition thereto under Section 59 by BOART INTERNATIONAL LIMITED.
DECISION OF A SUPERVISING EXAMINER OF PATENTS:
Background
Sandvik Aktiebolag (Sandvik) lodged Patent application 542437 on 11 September, 1980 as a Convention application based on U.S. application 081785 which was filed on 4 October, 1979. The application was advertised as accepted on 21 February, 1985. Boart International Limited (Boart) lodged a Notice of Opposition under section 59 on 19 August, 1985 after three months extension of time to do so had been granted under section 160.
The opposition under section 59 was heard in Canberra on 18 November, 1986. Mr. G.R. Munt, Patent Attorney, of Clement Hack & Co., Patent Attorneys of Melbourne, appeared for the applicant, Sandvik. Mr. A.W. Thomas, Patent Attorney, of Collison & Co., Patent Attorneys of Adelaide, appeared for the opponent, Boart.
Grounds of Opposition
The Notice of Opposition listed a number of grounds of opposition including paragraph 7, reading as follows:
That the invention, so far as claimed in any one claim, is not based on the first application for a patent made in a convention country for that invention."
However, at the hearing, Mr. Munt pointed out that this paragraph is not directed to a ground of opposition under section 59, and the submissions on behalf of the opponent made at the hearing were limited to those grounds set out in paragraphs (e) and (h) of sub‑
section 59(1), i.e. prior publication and lack of novelty.
The Specification
The specification, as accepted, is entitled "Rock Drill" and commences:
"The present invention relates to a rock drill for percussion drilling comprising a bit body which includes a generally transverse front face. A button insert of hard material is mounted in the centre of the front face so that it extends longitudinally outwardly thereof substantially in alignment with the longitudinal axis of the bit body. Angularly spaced outer button inserts of hard material are mounted in the front face around the central button insert and extending outwardly of the front face."
Then follows a description of the prior art and the alleged problems of the prior art as follows:
"In our German OS 27 52 544, a rock drill of the above type is disclosed. This disclosure also suggests that the central button insert should extend beyond the outer ends of the outer button inserts which has been found to improve the straightness of the hole.
The present invention seeks to improve the basic design shown in German OS 27 52 544. More particularly, the invention seeks to provide a rock drill of the above type which has a drilling rate as high as possible without causing premature failure of the button inserts.
It is believed that the accuracy of the straightness of the hole is increased if the extent of the central button insert beyond the outer inserts is increased. However, it has been found that the central insert is subject to premature failure where such extent is too great. On the other hand, where such extent is too small a decreased drilling rate results."
I note here that the description refers to German Offenlegungsschrift (OS) 2752544, a specification which I will refer to later in this decision.
There is a consistory statement, which is equivalent to claim 1, followed by further alleged problems of the prior art and preferred features to overcome such problems as follows:"It has also been found that the distance between exposed adjacent side surfaces on the central button insert and on each of the outer button inserts is a relevant parameter with regard to drilling rate and life of the rock drill. It has been found that if this distance exceeds a certain value, the inserts may be subject to premature failure.
It is believed that such failure is caused due to the ridge of the rock which is created between the central insert and the outer inserts during drilling. It is also believed, however, that such a ridge, if not too high, favourably affects the drilling rate, since it has a self‑sharpening effect on both the central insert as well as on the outer inserts. Surprisingly it has been found that the extent of the central insert beyond the outer inserts and the transverse distance between said inserts are two parameters which depend to some extent on each other. In other words, a change of the first‑
mentioned parameter may involve a change of the second parameter if the drilling rate and life of the rock drill shall remain as high as possible.
Preferably therefore, the ratio of Y to D is in the range of 8% to 22%, where Y is the distance between exposed, adjacent side faces on said central button insert and on each of said outer button inserts as projected onto a plane perpendicular to the longitudinal axis of the bit body.
The invention is particularly but not only intended to be used in connection with drilling of holes having a diameter not exceeding 45mm. In these cases the outer inserts may be arranged in an annular row and inclined at an angle relative to the longitudinal axis of the drill body to define the outer diameter D of the hole. Alternatively, only one or more of the outer inserts may define the outer diameter D, in which case preferably the outer inserts are arranged such that they overlap angularly, that is viewed angularly one outer insert will always at least partly overlie another outer insert."
There is a description of a preferred embodiment and several modifications followed by a statement of claims. The claims are as follows:
1.A rock drill for percussion drilling comprising a bit body, said bit body including a front face extending generally transversely relative to the longiudinal axis of said bit body, a central button insert of hard material, such as cemented carbide, said central button insert extending longitudinally outwardly of said front face in alignment with said longitudinal axis, and an array of outer button inserts of hard material, such as cemented carbide, angularly spaced on said front face in a single row about said longitudinal axis, said central button insert extending outwardly of said front face beyond said outer button inserts and said outer button inserts being inclined at an angle relative to said longitudinal axis, and said array being arranged to define an outer diameter D of the hole drilled by the rock drill, and wherein the ratio of X to D ranges from a minimum of 5% up to 20%, where X is the outward extent of the outer end of said central button insert beyond a transverse plane through the outer end of any one of said outer button inserts which plane is perpendicular to the longitudinal axis of the bit body.
2.A rock drill according to claim 1, wherein the ratio of X to D is in the range of 5% to 12%.
3.A rock drill according to claim 2, wherein the ratio of X to D is in the range of 5% to 10%.
4.A rock drill according to any one of claims 1 to 3 wherein the array of outer button inserts is annular with all of the outer button inserts being arranged to define the outer diameter D of the hole.
5.A rock drill according to any one of claims 1 to 4, wherein the ratio of Y to D is in the range of 8% to 22%, where Y is the distance between exposed, adjacent side faces on said central button insert and on each of said outer button inserts as projected onto a plane perpendicular to the longitudinal axis of the bit body.
6.A rock drill according to claim 5, wherein the ratio of Y to D is in the range of 10% to 17%.
7.A rock drill according to claim 6, wherein the ratio of Y to D is in the range of 10% to 13% for D up to 30mm and 12% to 17% for D above 30mm.
8.A rock drill for percussion drilling comprising a bit body, said bit body including a front face extending generally transversely relative to the longitudinal axis of said bit body, a central button insert of hard material, such as cemented carbide, said central button insert extending longitudinally outwardly of said front face in alignment with said longitudinal axis, and an array of outer button inserts of hard material, such as cemented carbide angularly spaced on said front face in a single row about said longitudinal axis, said outer button inserts extending outwardly of said front face and being inclined at an angle relative to said longitudinal axis and said array being arranged to define an outer diameter D of the hole drilled by the rock drill not greater than 45mm, and wherein the outer end of said central button insert extends beyond a transverse plane through the outer ends of said outer button inserts a distance X ranging up to 8.0mm with the ratio of X to D being in the range of 5% to 20%, said transverse plane being perpendicular to the longitudinal axis of the bit body, and the distance Y between exposed, adjacent side faces on said central button insert and each of said outer button inserts is in the range of 3.0mm to 10.0mm, as measured along a plane perpendicular to the longitudinal axis of the bit body.
9.A rock drill according to claim 8, wherein the distance X ranges up to 4.0mm and the distance Y is in the range of 3.5mm to 7.0mm.
10. A rock drill according to claim 9, wherein the ranges of the distances X and Y are respectively 2.4mm to 3.0mm and 4.5mm to 5.5mm.
11. A rock drill according to any one of the preceding claims, wherein the bit body either forms part of an integral drill steel or has a rearwardly extending portion with conical surface adapted for connection to a drill rod of corresponding conical shape, or has a rear threaded portion adapted for connection to a drill rod having corresponding threads.
12. A rock drill substantially as herein described with reference to the accompanying drawings.
The Evidence
The only evidence on file is that lodged by the opponent as evidence‑in‑support.
This evidence consists of four declarations.
A declaration by Jochanan Hosea Romm, a Patents Manager of the parent company of the opponent, Boart, is directed to establish‑ ing the locus standi of the opponent.
A declaration by Gert Schmitt‑Nilson, a West German Patent Attorney, establishes that German OS 2752544 in the name of the present applicant, Sandvik, was lodged in the German Patent Office on 24 November, 1977, became open to public inspection in West Germany on 31 May, 1979, and is still in force.
A declaration by Alun William Thomas, Patent Attorney of Collison & Co., establishes that the German OS 2752544 became open to public inspection in Australia on 1 November, 1979. A copy of the German OS No. 2752544 is attached to the declaration as an exhibit together with a verified English translation.
The main part of the evidence is a declaration by William Kenneth Frederick McCallum.
Mr. McCallum is a South African Patent Agent. He contends that all the features of claim 1 of the specification in suit are disclosed in the abovementioned German OS 2752544. In paragraph 5 of his declaration, Mr. McCallum tabulates the features as follows:
"Claim 1
(a) a front face Figure 2, ref 21
(b) extending generally transversely
relative to the longitudinal axis yes
(c) a central button insert ref 12
(d) extending longitudinally outwardly
of the front face in alignment with
the longitudinal axis Figures 1, 2 and 3
(e) an array of outer button inserts ref 11 and Figure 4
(f) angularly spaced on the front face Figure 4
(g) the central insert extending
outwardly from the front face
beyond the outer inserts Figures 1, 2 and 3
(h) the outer inserts inclined at an
angle to the longitudinal axis Figure 3
(i) and defining the outer diameter
of the hole to be drilled; and Figure 4
(j) of the ratio x:D is in the range
5% up to 20% Figure 4."
Mr. McCallum then indicates that D is the diameter of the hole to be drilled and x is the distance by which the outer inserts are behind the central insert in the axial direction of the drill. He refers to claim 5 of the specification in suit and indicates that Y, referred to in claim 5, is the distance between the side of the central insert and the inner sides of the inclined inserts.
Paragraphs 10(b) and (c) of Mr. McCallum's declaration are as follows:
"(b)I have measured the parameters in Figures 3 and 4 of the German drawings. The dimensions are as follows:
D ‑ 35mm
x ‑ 2.5mm
Y ‑ 5mm
(c) The ratios are as follows:
x/D ‑ 7.14%
Y/D ‑ 14.28%."
Mr. McCallum submits that these ratios fall within the range of ratios defined in claims 1 and 5 in suit. He further submits that claims 2 to 7 in suit are also disclosed in the German OS.
Although claims 8, 9 and 10 in suit define specific dimensions, Mr. McCallum submits that these claims, also, are disclosed in the German OS as the drawings of this specification have relevant dimensions which fall within the range of dimensions defined in claims 8, 9 and 10.
Mr. McCallum further submits that claim 11 in suit is also disclosed in the German OS. He then asserts that the declaration lodged in support of the application in suit is false in that the American application, on which the present Australian application is based, was not the first application made in a Convention country in respect of the claimed invention. This invention has been disclosed and claimed in the German OS which was lodged earlier than the American application and which was made by Sandvik, the present applicant.
The Submissions
Mr. Thomas, for the opponent, submitted that, although the application in suit has been lodged as a Convention application based on U.S. application 081785, lodged 4 October, 1979, this U.S. application is a continuation‑in‑part of U.S. application 854752, lodged 25 November, 1977 and now abandoned. Mr. Thomas argued that a Convention application must claim matter based on the first disclosure in a Convention country. Since no request under section 142AA has been lodged to disregard the earlier U.S. application, the claims in suit are not entitled to any Convention priority as the application was lodged more than twelve months after the first U.S. application. Consequently, the priority date of the claims in suit should be the date of lodgement of those claims, i.e. 11 September, 1980.
Mr. Thomas further asserted that the earlier U.S. application is not the first application in a Convention country to disclose the invention defined by the claims in suit, but that the German OS is the first application by Sandvik to disclose the matter on which those claims are fairly based. Mr. Thomas, in referring to the McCallum declaration, contended that all the claims are disclosed in the German OS including claim 11. Claim 11 defines three alternative arrangements for connecting the bit body to a drill rod and Mr. Thomas maintained that, although at least one of those alternatives viz. the provision of a rear threaded portion, is not specifically disclosed in the German OS, such an arrangement was part of common general knowledge in the field of rock drill manufacture.
Since in his view all the claims in suit are disclosed in the German OS, it follows that they are not entitled to any Convention priority as they were lodged more than twelve months after the date of lodgement of the application of first disclosure. Consequently, according to Mr. Thomas, the claims in suit have a priority date equivalent to their date of lodgement, 11 September, 1980, and are all prior published by the German OS which was open to public inspection in the Australian Patent Office library on 1 November, 1979.
Mr. Thomas referred also to several decided cases including Herrburger Schwander v. Squire 6 RPC 194, to support the technique of measuring patent specification drawings to establish that specific ratios have been disclosed. However, none of these cases refers specifically to the measurement of drawings.
In response, Mr. Munt referred to section 141 of the Patents Act and submitted that, although section 141 refers to "disclosure", it also refers to "an invention" and that the basic document should be directed to the same invention as that claimed in the Australian application. He argued that the German OS is not directed to the same invention as that defined by the claims in suit, as the specification does refer to the German OS (page 1a, lines 17 to 21) as indicated earlier and describes the present invention as being an improvement on the rock drill of that German OS. Mr. Munt maintained that, since the German OS does not specifically refer to any of the ratios or dimensions which are part of the presently claimed invention, the claims in suit quite properly should be afforded their Convention priority being the date of lodgement of US application 081785, i.e. 4 October, 1979. Therefore the claims are not prior published by the German OS.
Mr. Munt also referred me to a number of decided UK cases including Westminster Bank Limited's Patent 1967 RPC 600 and Alfa‑Laval Aktiebolag's Application 1968 RPC 216. These cases deal with paragraph 14(1)(h) and sub‑section 1(2) respectively of the UK Patents Act 1949. However, Mr. Munt submitted that these sections are similar to section 141 of the Australian Patents Act. Both decided cases deal with the question of whether or not the claims in dispute are directed to the same invention as that invention to which the respective basic document is directed. Thus it is not (he said) just what is disclosed in the basic document but to what invention the basic document is directed which is of importance.
Mr. Munt went on to express concern about the practice of measuring patent specification drawings to show disclosure of specific ratios especially where those drawings have not been specifically described as being drawn to scale. He submitted that there is no legal authority to support such a practice.
He further submitted that the disclosure of one value in a range of values is not disclosure of the total range.
The Decision
Sections 141, 142 and sub‑section 145.(a) read as follows:
"141.(1) Where an application for protection in respect of an invention (in this Part referred to as "the basic application") has been made in a Convention country and a person, being a person referred to in Section 34, who ‑
(a)is the applicant in the Convention country;
(b)is the assignee of the applicant in the Convention country;
(c)is the legal representative of the applicant in the Convention country or of his assignee; or
(d)has the consent of the applicant in the Convention country or of a person who is his assignee or legal representative,
makes an application, or 2 or more of such persons make a joint application, for a standard patent or a petty patent within 12 months after the date on which the basic application was made, the priority date of a claim of the complete specification or of the claim of the petty patent specification, as the case may be, being a claim fairly based on matter disclosed in the basic application, is the date of making of the basic application.
(2)Where 2 or more applications have been made for protection in respect of the invention in one or more Convention countries, the period of twelve months referred to in sub‑section (1) shall be reckoned from the date on which the earlier or earliest of those applications was made.
142.(1)Where 2 or more applications for protection in respect of inventions have been made in one or more Convention countries, one application may be made by a person referred to in sub‑section 141(1), or by 2 or more of such persons jointly, within 12 months from the date on which the earlier or earliest of those applications was made, in respect of the inventions disclosed in the basic applications.
(4)The priority date of a claim of the complete specification or of the claim of the petty patent specific‑
ation, as the case may be, being a claim fairly based on matter disclosed in one or more of the basic applications, is the date on which the matter was first so disclosed.
145.For the purposes of this Act ‑
(a)matter shall be deemed to have been disclosed in a basic application if it was claimed or disclosed (otherwise than by way of disclaimer or acknowledge‑
ment of prior art) in the basic application or in a specification or other document lodged in support of, and at the same time as, the basic application;"
Sections 141 and 142 refer to an application or applications for protection in respect of an invention or inventions. To my mind, this specifies the class of protection for which the basic application(s) must be made. The basic application(s) must be for protection of an invention and not for protection of a trade mark, for example. The Act specifies that to be entitled to Convention priority the claims of the Convention application must be fairly based on matter disclosed in the basic application(s). This does not mean that the Convention application must, necessarily, claim the same invention as that invention for which the basic application seeks protection.
The decided cases referred to by Mr. Munt and in particular Westminster Bank Limited's Patent and Alfa‑Laval Aktiebolag's Applications (supra) are not relevant to sections 141, 142 and 145 of the Australian Patents Act. These cases deal with paragraph 14(1)(h) and sub‑section 1(2) respectively of the UK Patents Act 1949, as indicated earlier. Sub‑section 1(2) deals specifically with Convention applications as follows:
"(2) Without prejudice to the foregoing provisions of this section, an application for a patent for an invention in respect of which protection has been applied for in a convention country may be made by the person by whom the application for protection was made or by the assignee of that person:
Provided that no application shall be made by virtue of this subsection after the expiration of twelve months from the date of the application for protection in a convention country or, where more than one such application for protection has been made, from the date of the first application."
This section requires that the convention application be for an invention for which protection has been applied in a Convention country. There is no similar requirement set out in sections 141, 142 or 145 of the Australian Patents Act so that the Alfa‑Laval and Westminster Bank cases are of no assistance in the present action.
I now turn to the question of whether or not the claims in suit are fairly based on matter disclosed in the German OS made by the same applicant, Sandvik. Such a question was considered by the High Court in Hoffman‑La Roche & Co. AG's Application [1971] AOJP 819. At page 822, Gibbs, J., as he then was, considered this question as follows:"The question whether a claim in a complete specification is fairly based on matter disclosed in the provisional specification was considered by the Patents Appeal Tribunal, constituted by Lloyd‑Jacob J. in Re Mond Nickel Company Ltd.'s Application [1956] RPC 189 at p.194 and Imperial Chemical Industries Ltd.'s Application [1960] RPC 223 at p.228. The test to be applied is expressed in the act in identical language in relation to provisional specifications and basic applications and what was said in those cases is applicable to the question that arises under ss.141 and 142 of the Act. Lloyd‑Jacob J. did not attempt to define all that is meant by the phrase 'fairly based' but he gave a guide to the approach that should be made in deciding a question of this kind. In his opinion it is necessary to investigate three questions which, if one substitutes a reference to the basic application for a reference to the provisional specification, he finally formulated as follows:
(1)Is the alleged invention as claimed broadly (i.e. in a general sense) described in the basic application?
(2)Is there anything in the basic application which is inconsistent with the alleged invention as claimed?
(3)Does the claim include as a characteristic of the invention a feature as to which the basic application is wholly silent?
It is needless to say that these questions are intended to assist the Court in applying the test laid down by the Act itself, viz. whether the claim in the complete specific‑
ation is fairly based on matter disclosed in the basic application, but is not a substitute for that test. In Societe des Usines Chimiques Rhone‑Poulenc v. Commissioner of Patents (1958) 100 CLR 5 at p.11 Fullagar J. held that s.45(5) of the Act cannot be limited to cases where the subject matter of the later application has been made the subject of a specific claim in the earlier application, and further expressed the view that there must be 'a real and reasonably clear disclosure'. In relation to these matters there is no point of distinction between s.45(5) and ss.141 and 142."
In the present case, I am prepared to accept that the features (a) to (i) of claim 1 in suit, as set out in Mr. McCallum's declaration and referred to earlier in the consideration of the evidence, are disclosed in the German OS. I also consider that feature (j), i.e. the range of ratios of X to D being 5% to 20% is a characterizing feature of the invention of claim 1 in suit. This is apparent from the description of the problems of the prior art referred to earlier in the consideration of the specification in suit. It is this ratio, according to the description, which assists in the prevention of premature failure of the central insert and the prevention of decreased drilling rate results.
In considering the three questions listed above, I am satisfied that the second question can be answered in the negative. As to question (1), I do not think that the alleged invention is broadly described in the basic application. There is certainly no description of any ratio falling within the range of ratios let alone description of the advantage that such a ratio or range of ratios affords to the rock drill bit. However, the drawings of the basic application are also part of the disclosure. In decided cases, including Herrburger Schwander v. Squire (supra) referred to by Mr. Thomas, it is established that as the specification is directed to an addressee who is a man skilled in the relevant art, it is such a person who should determine what the specification discloses, i.e. at the date of its publication. In the present circumstances I must determine if a person skilled in the art would consider that the drawings of the German OS disclose a specific ratio. Would such a skilled person consider that patent specification drawings, which are not working drawings and not specifically stated as being drawn to scale, disclose such a ratio if he were not aware of the claims in suit? There is no evidence to establish that such person would come to this conclusion. The fact that Mr. McCallum, who is a South African Patent Agent and not a man skilled in the art in Australia, has drawn lines on the German OS drawings and measured the ratios with the benefit of having read the claims in suit is certainly not such evidence. In the absence of any such evidence, it seems to me that the German OS does not have a broad description of the claimed invention. Similarly, respecting question (3), it is wholly silent as to the specific range of ratios.
Even if I were to consider that a person skilled in the art would, without having the benefit of the claims in suit before him, measure the distances X and D as defined in claim 1 and then form a ratio of X to D for some purpose or other, I do not think that any specific ratio is disclosed. Mr. McCallum, in paragraph 10(c) of his declaration, maintains that the ratio of X to D is 7.14%. In measuring the same distances that Mr. McCallum has denoted on the drawings of Exhibit D to his declaration, I find the ratio to be approximately 7.6%. On measuring the drawing provided as part of the German OS exhibited as AWT‑2 to Mr. Thomas' declaration, I find the ratio to be approximately 7.4%. Thus I do not think that any specific ratio would be disclosed to the man skilled in the art, the ratio apparently varying with each different reproduction of the German OS he is examining at any particular time. It follows that claim 1 cannot be considered to be fairly based on matter disclosed in the German OS.
Claims 2 to 7 and claim 11 are appended to claim 1 and merely place further restrictions on the rock drill of claim 1. Therefore it follows that these claims also cannot be considered to be fairly based on matter disclosed in the German OS.
Claim 8 not only defines a range of ratios but also ranges of specific dimensions. Although the drawings of the German OS when measured fortuitously show specific dimensions which fall within the ranges of dimensions defined in claim 8, I do not think such drawings, which are not working drawings and which vary in size depending on what reproduction means is used to copy the originals, would disclose to a person skilled in the art such specific dimensions. Therefore, in my opinion, claim 8, and claims 9 and 10 which are appended to claim 8 cannot be considered to be fairly based on matters disclosed in the German OS.
Claim 12, an omnibus claim, is restricted to the specific disclosure of the essential features of the invention shown in the preferred embodiment. As such it is restricted to a smaller range of ratios and specific dimensions, and consequently, it also cannot be considered to be fairly based on the matter disclosed in the German OS.
In coming to the conclusion that none of the claims in suit can be considered to be fairly based on matter disclosed in the German OS, I am mindful of the words of Gibbs, J., referred to earlier, quoting Fullagar, J., as follows: "... there must be 'a real and reasonably clear disclosure'". In the present circumstances I do not think that there has been a real and reasonably clear disclosure in the German OS of the ratios or of the specific dimensions.
Because I have found that none of the claims in suit can be considered to be fairly based on matter disclosed in the German OS, the German OS is not relevant for the purposes of sub‑section 141.(2). However, I cannot say that the claims in suit should therefore be afforded a priority date which is the same date as the lodgement date of US applicaton 081785, i.e. 4 October, 1979. Were there no other considerations, this would be so, as the US specification is substantially the same as the specification in suit. However, as Mr. Thomas pointed out, the US applicaton 081785 is a continuation‑in‑part of abandoned US application 854752 which was lodged on 25 November, 1977 more than twelve months before the lodgement date of the present application.
Mr. Thomas submitted that no request under section 142AA had been lodged to have the earlier US application disregarded. If the present claims are fairly based on this earlier US document, they must be given as their priority date their date of lodgement. The declaration accompanying the application in suit does not refer to the earlier US specification, and the opponent has intimated that this amounts to "false suggestion". Apart from this aspect of the matter, other problems may arise if the earlier specification discloses the matter claimed in the application in suit.
As there is no copy of US application 854752 on file I direct the applicant to lodge a certified copy of that application within a period of 90 days from the date of this decision after which I will determine a further course of action.
I will consider the matter of costs at that stage.
(J.L. ROVETA)
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