Siemens AG v ABB Schweiz AG
[2015] APO 75
•12 November 2015
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Siemens AG v ABB Schweiz AG [2015] APO 75
Patent Application: 2011208855
Title:Method and apparatus for detaching frozen charge from a tube mill
Patent Applicant: ABB Schweiz AG
Opponent: Siemens AG
Delegate: Dr N.R. Madsen
Decision Date: 12 November 2015
Hearing Date: 26 August 2015, in Sydney
Catchwords: PATENTS – tube mill drive method for detaching material from the inner surface of the tube mill – section 59 – opposition to grant of a patent – amendment filed to statement of grounds and particulars at the hearing – new ground of utility raised at hearing – amendment to statement of grounds and particulars not allowed – grounds of clarity, fair basis, novelty, inventive step – claims are clear – claims lack fair basis – claims are novel – claims are inventive – opposition successful – opportunity to amend – costs awarded against applicant
Representation: Patent applicant: Jeremy Dobbin of FB Rice, Sydney, NSW
Opponent:Julian Cooke of counsel instructed by Ryan Curnick of Spruson & Ferguson, Sydney, NSW
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2011208855
Title:Method and apparatus for detaching frozen charge from a tube mill
Patent Applicant: ABB Schweiz AG
Date of Decision: 12 November 2015
DECISION
The opposition is successful. Claims 1-6 are not fairly based.
I allow the applicant two (2) months from the date of this decision to propose amendments to overcome these deficiencies.
I award costs in accordance with Schedule 8 of the Patent Regulations against ABB Schweiz AG
REASONS FOR DECISION
Background
This matter relates to patent application 2011208855 in the name of ABB Schweiz AG (the applicant), filed on 14 January 2011. The application was filed as an application under the Patent Cooperation Treaty and has a priority date of 21 January 2010.
The application was advertised as accepted on 5 September 2013. A notice of opposition to grant of a patent was filed on 4 December 2013 by Siemens AG (the opponent) after an extension of time was granted for filing of the notice. This notice was followed by a statement of grounds and particulars on 27 February 2014. The opponent completed evidence in support on 20 May 2014 filing a declaration by Graham Jenkins dated 14 May 2014, accompanied by supporting exhibits GJ1-GJ3. The applicant chose not to file evidence in answer. As no evidence in answer was filed there was no opportunity for the opponent to file evidence in reply.
The request for examination of the patent application was filed on 20 July 2012. As a consequence, substantive amendments of the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 that came into effect on 15 April 2013 do not apply to the present patent application. This includes the amendment to subsection 60(3A) that allows the Commissioner to refuse a patent application if satisfied on the balance of probabilities that a ground of opposition exists. Further to this point I note that the law that applies to the present grounds of opposition is that prior to amendment by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012.
Onus
It is well established under the previous legislation that in proceedings such as these before the Commissioner, the onus rests with the opponent to clearly establish its case in reaching a conclusion on any issue. In F. Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283, Emmett J of the Federal Court found that in opposition proceedings, the Court (and by implication the Commissioner of Patents in her role as a tribunal) should be "clearly satisfied that the patent, if granted, would not be valid". Where questions of fact such as obviousness and existence of invention are involved "the grant should not be refused unless it has been clearly shown that the grounds of opposition have been clearly made out" (Montecatini v Eastman Kodak (1971) 45 ALJR 593).
Grounds of Opposition
At the hearing the opponent pressed the grounds of lack of definition in the claims, clarity, fair basis, utility, novelty, and inventive step. The grounds of lack of definition in the claims under s40(2)(b), and utility (s18(1)(c)) were not raised in the statement of grounds and particulars filed on 27 February 2014. At the hearing the opponent filed a request to amend the statement of grounds and particulars to include the ground of utility supported by particulars mirroring those filed under fair basis. After the hearing I invited comment from the parties in regard to the amendment.
On 15 April 2013, the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No 1) also commenced. The Amendment Regulation significantly amended the Patents Regulations as they apply to patent oppositions. Because the opposition was filed after 15 April 2013, the law governing amendment to the statement of grounds and particulars appears as new regulation 5.16.
Relevantly, regulation 5.16 states:
(1) An opponent may request the Commissioner in writing to amend the opponent's statement of grounds and particulars:
(a) to correct an error or omission in the grounds of opposition; or
…
The opponent was unable to provide sufficient information to justify an error or omission. As a result, the request to amend the statement of grounds and particulars to include the ground of utility was refused in correspondence to the parties dated 12 October 2015. It follows that the grounds for consideration in the present opposition are clarity, fair basis, novelty, and inventive step.
The Specification
The invention described in the specification relates to tube mills commonly used for grinding material such as ore. A tube mill operates whereby large particulate material, such as gold ore for example, is delivered into a large pipe where it is mixed with grinding media such as grinding balls. Water can also be added to the mixture to assist in the grinding process. Rotation of the pipe causes the grinding of particulate material with the help of the grinding media.
At page 1 of the specification it is noted that it is common for the tube mill to be intermittently used. During such intermittent use, it is common that the ground material or “charge” within the pipe consolidates and becomes firmly stuck to the inner wall of the pipe. This attached material is referred to as “frozen charge”. When the mill is again set in rotary motion after a non-use that has led to the formation of frozen charge, there is a high likelihood that the charge may become detached at the highest point of the pipe’s rotation. As a result the frozen charge will drop onto the low point of the pipe, and given the potential size of the drop and mass of material, this may result in damage to the tube mill. (page 1 lines 11-18)
Because of the issues associated with frozen charge, it is common to check the pipe for its presence and stop operation in order to remove the attached material. Prior processes for removing frozen charge have included the use of air compressed hammers or by setting the rotation of the grinding pipe to oscillate around a predetermined angle to “shake” the material loose. The specification then notes that oscillating the motion of a grinding pipe around an angle involves positive and negative torque that is not suitable for use in mills with a geared drive. This is because a back-lash is created which places force on gear teeth which in time will damage the gears and decrease the lifetime of the drive train. (page 1 line 19 to page 2 line 9)
The specification then describes that the present invention involves varying the driving torque applied to the grinding pipe wherein the driving torque is always positive so the pipe does not change its rotational direction. Varying the torque on the pipe provides for varied torque acting upon the charge which facilitates its dislodging. The specification notes that such a driving torque prevents back-lash causing mechanical stress on gear teeth. (page 2 lines 25-32)
The invention is then discussed with reference to various features such as: wherein the grinding pipe is limited in its angular rotation to a maximum of 75° to ensure that frozen charge does not dislodge at a height where falling charge could cause damage to the tube mill (figure 1); pulsing the driving torque about an ever increasing reference level while also maintaining always positive torque (figure 2); or sinusoidally varying the driving torque instead of pulsing (figure 3).
Figures 2 and 3 also demonstrate the action of increasing the amplitude of pulses or a sinusoid as a torque reference level is increased with time.
The claims
The specification ends in eight claims as follows:
1. A method for detaching a frozen charge from an inner wall of a grinding pipe, the method comprising the steps of:
controlling a driving device of the grinding pipe to detach a frozen charge from an inner wall of the grinding pipe, which driving device is operable to apply a driving torque to the grinding pipe,
wherein controlling the driving device comprises varying the driving torque applied to the grind pipe wherein the driving torque is always positive so that the grinding pipe does not change its rotational direction.
2. A method as claimed in claim 1 wherein controlling the driving device comprises varying the driving torque applied to the grinding pipe about a predetermined and increasing torque reference level.
3. A method as claimed in claim 1 or 2, wherein varying the driving torque comprises varying the driving torque sinusoidally about the predetermined reference level.
4. A method as claimed in claim 1 or 2, wherein varying the driving torque comprises varying the driving torque in a stepwise manner about the predetermined reference level.
5. A method as claimed in claim 1 or 2, wherein varying the driving torque comprises varying the driving torque in any pattern about the predetermined reference level and comprised within a torque range proportional to the torque reference level.
6. A controller for detaching a frozen charge from an inner wall of a grinding pipe, the controller being adapted to control a drive device of a grinding pipe according to the method of any one of claims 1 to 5.
7. A method of detaching a frozen charge from an inner wall of a grinding pipe substantially as hereinbefore described with reference to the accompanying drawings.
8. An apparatus for detaching a frozen charge from an inner wall of a grinding pipe substantially as hereinbefore described with reference to the accompanying drawings.
Clarity and Claim Construction
While the rules of construction for an Australian patent specification are well summarized in Decor Corp v Dart Industries 13 IPR 385, the correct application of these rules to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70; 81 IPR 228 at [118] – [120]:
"the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear ... while the claims define the monopoly claimed in the words of the patentee's choosing, the specification should be read as a whole ... it is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification ... terms in the claim which are unclear may be defined or clarified by reference to the body of the specification."
I also note that the requirement that the claims are clear is understood to be satisfied if a person could ascertain "whether or not what he proposes to do falls within the ambit of the claim" (Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59).
In addition to the single clarity issue raised by the opponent regarding claim 5, it is useful to this decision to consider the appropriate construction of independent claim 1.
Claim 1
Claim 1 is directed towards a method for detaching a frozen charge from an inner wall of a grinding pipe. In this regard the method must be suitable for this claimed purpose. The claim then adds that the method comprises:
…controlling a driving device of the grinding pipe to detach a frozen charge from an inner wall of the grinding pipe, which driving device is operable to apply a driving torque to the grinding pipe…
Here the claim is limited to the control of a driving device of a grinding pipe to detach a frozen charge from the grinding pipe. In this sense, the claimed method is limited to the specific purpose of detaching a frozen charge. The driving device applies a torque to the grinding pipe. The claim then describes the particular form in which the torque is to be applied:
…wherein controlling the driving device comprises varying the driving torque applied to the grind pipe wherein the driving torque is always positive so that the grinding pipe does not change its rotational direction.
Here the form of the applied torque is such that the force applied to the grinding pipe is always in one rotational direction (always positive), further resulting in the prevention of any change in rotational direction of the grinding pipe. The reference to the torque being “always positive” while controlling the driving device means that throughout the entirety of the method which involves controlling the driving device “to detach a frozen charge”, the torque profile applied results in the driving device applying force in only one rotational direction. Further, the claim is limited such that the torque profile applied may only result in motion in one direction.
There was some discussion at the hearing that the claim was not so limited to preclude a positive driving torque resulting in zero rotational motion. In this sense the opponent argues that within the scope of the claim there is included the situation wherein the grinding pipe does not rotate. The opponent submitted that:
“…the positive torque but may not be sufficient to rotate the grinding pipe at all (ie. it may be stationary) or to drive the grinding pipe to achieve its desired angular rotation.”
I also understand that the opponent submits that the inclusion of a feature that produces the necessary motion as part of the claim would involve an impermissible gloss. Alternatively worded, it was said that a purposive construction of the claims would not involve a limitation of the scope of the claims to the driving torque causing motion. Respectfully, I find this submission entirely contrary to the well traversed rules of construction.
Reading claim 1 through the eyes of the skilled addressee in the context of removing a charge from a grinding pipe using a varying torque must, with the aid of common sense, lead one to consider that the driving torque of claim 1 produces motion which is suitable for the removal of frozen charge. To construe the claim to include a stationary grinding pipe would be absurd. The “driving torque” should be purposively construed to be a torque that “moves” or “rotates” the grinding pipe. In other words, claim 1 properly construed is directed to the varying of the driving torque to detach frozen charge. This necessarily implies motion.
Using a varying torque to remove a frozen charge is consistent with the specification as a whole which describes the invention as facilitating removal of charge because of variations in acceleration resulting in the “shaking” of the grinding pipe. Here the frozen charge is subsequently subject to a varying torque which facilitates dislodging. Taking this approach I can see no glossing of information into the claim.
Claim 5
The opponent submitted that claim 5 lacks clarity because it claims the feature “… and comprised within a torque range proportional to the torque reference level”. Claim 5 in its entirety is as follows:
A method as claimed in claim 1 or 2, wherein varying the driving torque comprises varying the driving torque in any pattern about the predetermined reference level and comprised within a torque range proportional to the torque reference level.
The opponent recites the statement of the expert Mr Jenkins as found at [22] of his declaration adding that the use of the word “proportional” means that the boundaries of the monopoly are unclear. At [22] Mr Jenkins states:
“There is no clarification or definition as to what relationship is needed between the driving torque and the reference torque for them to be proportionally related. Any relationship can be proportional, including higher, lower, fraction, multiple etc.”
To me it appears that the statement provided by Mr Jenkins assists to a degree in determining the scope of the claim. Firstly, proportionality can be any relationship such as higher, lower, fraction or multiple. I further make reference to the definition of the mathematical concept of “proportional” in the Macquarie Dictionary (The Macquarie Dictionary, 6th ed. 2013, from the same or a constant ratio.
This definition is consistent with the statement of Mr Jenkins as to the possible bounds of the relationships defined by proportionality. Having the same or a constant ratio is further depicted in respect of changes in the two parameters of claim 5 being the torque range and the predetermined torque reference level. The situation whereby these parameters are varied is well depicted with reference to figures 2 and 3 that are reproduced earlier in this decision.
These figures show embodiments whereby as the predetermined torque reference level TReference is increased over time, the “amplitude” or “range” of the steps or oscillations about the reference level also increases. In these figures the torque range is directly proportional to the torque reference level. Importantly I note that the claim is not so limited and simply requires that the torque range be proportional to the torque reference level. In this regard the claim comprises both direct and inverse proportionality of the torque range to the reference level.
I also make reference to page 3 lines 3-6 of the specification which provide alternate wording relevant to figures 2 and 3 as follows:
…varying the driving torque comprises varying the driving torque in any pattern about the predetermined torque reference level, yet comprised between a maximum torque level and a minimum torque level that define an increasing torque range proportional to the increasing torque reference level.
From the above discussion I consider it follows that the use of the term “proportional” applies a limitation to the claim whereby both of the relevant parameters of claim 5 (i.e. torque range and the predetermined torque reference level ) are not constant. In accordance with this, claim 5 includes the feature whereby as the varying predetermined torque reference level changes, the range of variation of the driving torque about this reference level changes proportionally to the predetermined torque reference level. The claim applies no bounds as to the particular magnitude and characteristic of this proportionality. Regardless, the limitation imposed by the feature involving proportionality is clear in that proportionality involves a constant ratio between two varying parameters. It follows that there is no ambiguity in the claim as argued by the opponent.
Fair basis
The requirement that the claims be fairly based on the description is a requirement of consistency of the claims with the description or, more particularly, with the invention described. Subtests accepted in LockwoodSecurity Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 69, 98-99 as being relevant to the consideration of fair basis are:
…whether there is a real and reasonably clear disclosure of the claimed invention in the specification [from Société Des Usines Chimiques Rhône-Poulenc v Commissioner of Patents (1958) 100 CLR 5 and cited with approval in Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79] or
…whether the claims travel beyond the subject matter of the invention described in the specification [Olin v Super Cartridge (1977) 180 CLR 236].
In addition to the tests of a real and reasonably clear disclosure, and whether the claim travels beyond matter disclosed in the specification, I refer to the observation of the High Court in Lockwood (supra) at [99]:
“…the correct position is that a claim based on what has been cast in the form of consistory clause is not fairly based if other parts of the matter in the specification show that the invention is narrower than that consistory clause. The inquiry is into what the body of the specification read as a whole discloses as the invention. An assertion by the inventor in a consistory clause of that of which the invention consists does not compel the conclusion by the court that the claims are fairly based nor is the assertion determinative of the identity of the invention. The consistory clause is to be considered by the court with the rest of the specification.”
In other words, it is clear that fair basis requires an assessment of the disclosure of the body of the specification “as a whole”. In this regard a claim may lack fair basis if there is some implication in the body of the specification that a missing feature is essential. This is expressed at [100] of Lockwood (supra) where the court approved the following statement from Lahore’s Patents, Trade Marks & Related Rights (Vol 1, Butterworths (1996)):
“…A statement implying that the invention has a limited field of application or requires as an essential feature something which is not required by the claims may result in a finding that the claims are wider than the invention disclosed in the specification, and are accordingly invalid for lack of fair basis on the matter described in the specification.”
Whether the claims require a maximum angle of 75°
The opponent broadly submitted that:
“The body of the Application read as whole (eg. page 1, lines 13-18; page 2, lines 31 to page 4, line 5; page 4, lines 13-17) discloses that during the frozen charge removal operation the maximum angle that the grinding pipe is driven through is 75° to ensure that the frozen charge does not dislodge at a height which will cause substantial damage to the inner wall of the grinding pipe.”
On this basis the opponent argues that because the claims 1-6 do not require that a maximum angle of the grinding pipe is 75°, the claims travel beyond the disclosure of the alleged invention. In other words, the claims are said to lack fair basis because these claims include within their scope the situation for example, whereby the grinding pipe is driven through to 180° which according to the opponent “would cause substantial damage”. Turning to the disclosure of the relevant parts of the whole of the specification it is clear that:
1.The specification indicates that the dropping of frozen charge from a highest point of rotation to the lowest point of rotation, given the potential drop and materials involved could result in substantial damage. (my emphasis) (page 1 lines 13-18)
2.The invention is discussed in the specification as operating at a maximum of 75°. (page 2 lines 31 to page 4 line 5; page 4 lines 13-17)
I first turn to point 1 and note that in addition to the problem of frozen charge dropping from high to low point of the grinding pipe the specification discusses another problem relating to present methods of removing frozen charge. Here, a gearless grinding pipe is driven to oscillate about a predetermined angle of rotation (page 2 lines 3-5). Such a system will involve the application of torque that can be both positive and negative which is not suitable for use in mills having a geared drive as back-lash can cause damage to gear teeth decreasing the lifetime of the drive train (page 2 lines 6-9). The specification then introduces the present invention, as a consistory statement, in the words of claim 1. The statement uses the word “comprises” to introduce the features of the invention, this being non-limiting to the inclusion of further features. Following this the specification states at page 2 lines 27-32 that:
By varying the driving torque applied to the grinding pipe the torque acting upon the frozen charge is also varied which facilitates the dislodging of the frozen charge.
Preferably, the driving torque is always kept in the same direction during such control.
Application of such driving torque prevents back-lash which causes mechanical stress on gear teeth associated with the grinding pipe thus increasing the lifespan of the grinding pipe machinery.
To me it appears that the specification discusses the dropping of charge from high to low as background to the present invention. The potential for damage provides a motivation leading to prior art removal methods which themselves present a problem of back-lash in geared drives. From the above extract it appears clear that the primary objective of the invention is to address this back-lash issue as claim 1 and the broadest description of the invention includes the feature of a driving torque that is always positive resulting in no change in rotational direction. On this basis alone, the specification does not appear to suggest that the feature relating a maximum angle of 75° is essential as none of the above identified text appears to imply that the specification intends to provide an invention that addresses the issue of falling charge by way of a maximum angle. However I must give consideration to the remainder of the specification in considering whether the claimed subject matter travels beyond the disclosure as a whole.
As noted above at point 2, the invention is discussed in the specification as operating at a maximum of 75°. Of particular relevance is the discussion of the present invention and preferred embodiments (pages 3 and 4) after consistory statements relating to dependent claims/preferred embodiments (pages 2, 2A and 3) as follows:
These and other aspects of the invention will become apparent from the following descriptions when taken in combination with the accompanying drawings in which:
Figure 1 is a cross sectional view of a grinding pipe inner wall according to the present invention;
Figure 2 is a graphical representation of torque steps applied to the grinding pipe in accordance with one embodiment of the present invention and
Figure 3 is a graphical representation of a sinusoidal variation in torque applied to the grinding pipe in accordance with a second embodiment of the present invention.
With reference to Figure 1 there is shown a grinding pipe 10 including an inner wall 12 to which a mass of frozen charge 14 has become adhered. In accordance with the present invention, the frozen charge 14 can be detached from the inner wall 12 by agitating the arrangement 10. The method of agitation is implemented by operating a controller (not shown) which controls a driving device (not shown) of the grinding pipe 10 by applying a driving torque which in turn applies a driving torque to the grinding pipe 10. By varying the torque applied to the grinding pipe 10, the speed of rotation of the grinding pipe 10 and consequently the angle of rotation of the grinding pipe 10 is varied. During the frozen charge removal operation, the grinding pipe 10 is driven through an angle 16, which is a maximum of 75° to prevent the frozen charge from dropping due to gravity. This angle 16 can also be less than 75° depending on the type of ore. This "shaking" of the grinding pipe 10 by applying a varying driving torque results in the loosening of the frozen charge 14 from the inner wall 12 within a controlled range of angle of rotation, thus limiting the likelihood of damaged (sic) caused by the dislodging of the frozen charge 14 at an inappropriate point of rotation.
…
The angle of rotation through which the grinding pipe 10 is moved during the process of dislodging frozen charge 14 is limited to a maximum of 75° to ensure that the frozen charge 14 does not dislodge at a height which will cause substantial damage to the inner wall 12 of the grinding pipe 10. The angle 16 is monitored in order to ensure a proper stop before the angle reaches 75°.
In regard to this text I understand the opponent’s submission to be that the discussion in relation to the angle of 75° is provided in respect of the “present invention” and is not provided in any way as a preferred embodiment of the invention. Responding, the applicant suggests that the angle is simply presented as a preferred embodiment and on this basis the feature of 75° is not essential. Additionally the applicant makes reference to the disclosure of the prior art document (AU 2005227083) whereby while stating that material may fall and cause damage to the grinding pipe, its independent claim is silent in regards to any angular range. It follows that the applicant submits:
“That the angle of rotation should not exceed a particular angle is clearly therefore not something that needs to be explicitly recited in claim 1. The risk of a charge dropping is well known in the art see for example the opponent’s own prior art… The specific angle through which it is safe to turn the mill will depend on the nature of the frozen charge and the material it is composed of.”
Firstly, in respect of the applicant’s submission discussing the prior art I note that a consideration of fair basis is not affected by that which is disclosed in a particular piece of prior art. What is required is an assessment of consistency between the claims and the specification as a whole as articulated in Lockwood (supra) and identified above. Thus what remains to consider is whether the discussion in the specification of the feature relating to 75° represents disclosure of an essential feature or an optional aspect of an embodiment, that disclosure being read through the eyes of the skilled addressee. In this sense I interpret the applicant’s submission to suggest that the skilled addressee, given their knowledge, may consider it implicit that an angle of 75° is not essential.
The discussion of figure 1 is distinct from the discussion of figures 2 and 3 which are clearly indicated as being preferred embodiments. Firstly figure 1 is referred to as a cross section of a grinding pipe inner wall according to the present invention. Figure 1 is reproduced below:
A discussion is then provided of figure 1 in respect of detaching the frozen charge from the inner wall in accordance with the present invention. In this discussion it is indicated that the angle 16 is a maximum of 75°. At no point in this discussion is there any mention of features being optional or preferred. The discussion provides disclosure that the present invention includes a maximum angle of rotation. While the consistory statement on page 2 which recites the wording of claim 1 does not reflect this disclosure, it is the case that there is a clear suggestion in the specification that the present invention includes this feature. I see no basis in the body of specification that would lead the skilled addressee to consider that the explicit reference to 75° being a feature of the present invention can be regarded as discussion of an optional or preferred feature. Further, the reference made by the applicant to the prior art document does not satisfy me that the skilled addressee would apply particular further knowledge to render it implicit that the relevant feature is not part of the invention. In substance, the body of the specification states that a particular angular maximum is an essential aspect of the present invention, this being inconsistent with that which is claimed.
It necessarily follows that claims 1-6 travel beyond the disclosure of the specification as a whole and that these claims lack fair basis.
Whether the claims require the torque to rotate the grinding pipe
The opponent essentially submitted that the claims are not limited such that the claims are directed towards torque sufficient to rotate the grinding pipe or to achieve its desired angular rotation. In this regard it was submitted that claims 1-6 lack fair basis because the claims include a grinding pipe which does not rotate, this being inconsistent with the body of the specification.
In regard to this argument I refer to my construction of the “driving torque” of claim 1 above at [18]-[24]. This construction precludes the construction required by the opponent in regard to its fair basis submission. Claims 1-6 are limited in their scope in that they include motion of the grinding pipe to remove frozen charge.
Therefore, claims 1-6 do not travel beyond the disclosure of the body of the specification and are fairly based in view of this submission.
Novelty
For the purposes of subsection 7(1) of the Patents Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any one of the prior art information.
It is well established that the general test for anticipation is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20]; [1977] HCA 19; 137 CLR 228 at 235:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement.”
This test is satisfied if the alleged anticipation discloses all of the essential features of the invention as claimed (Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40 at [19]; [1990] FCA 40; 16 IPR 545 at 549). To meet this requirement, the prior art must contain “clear and unmistakable directions to do what the patentee claims to have invented” (The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 at 486).
Regarding the requirement of a clear and unmistakable direction, Australian courts have often cited with approval the words of the UK Court of Appeal in The General Tire case which states at pages 485-486:
"If ... the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee's claim, but would be at least be as likely to be carried out in a way that would not do so, the patentee's claim will not be anticipated…
To anticipate the patentee's claim, the prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented ... A signpost, however clear, upon the road to the patentee's invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee…”
I also note that an alleged anticipation need not explicitly disclose all of the essential features of the claimed invention. In this regard, a disclosure may be implicit as discussed in Bristol-Myers Squibb Company v FH Faulding & Co Ltd [2000] FCA 316; 46 IPR 553 at 576:
“What all authorities contemplate, in our view, is that a prior publication, if it is to destroy novelty, must give a direction or make a recommendation or suggestion which will result, if the skilled reader follows it, in the claimed invention. A direction, recommendation or suggestion may often, of course, be implicit in what is described and commonly the only question may be whether the publication describes with sufficient clarity the claimed invention or, in the case of a combination, each integer of it.”
The following document was pressed by the opponent in its submissions as depriving the claimed invention of novelty:
AU 2005227083 A1 (Siemens Aktiengesellschaft) 6 October 2005
The document starts by discussing the problem of frozen charge in tube mills in that such charge may become detached at a height and fall thus causing damage to the tube mill. Similarly to the present application the document discusses the detection of frozen charge and that it is often removed by softening with water and/or using compressed-air hammers. The invention is then introduced in broad terms on page 2 at paragraphs 3 and 4 as follows:
According to the invention, the drive device of the grinding pipe is used for loosening and detaching the frozen charge. By controlling or regulating the drive device of the grinding pipe for targeted detachment of the frozen charge, the grinding pipe is rotated in an angular range in which falling material does not cause damage to the grinding pipe or other components of the tube mill. Time-consuming manual actions can thus be dispensed with in most cases.
Angle of rotation and speed of rotation of the grinding pipe are advantageously varied by the drive device. By targeted variation of the rotary movement, that is variation of acceleration and direction of rotation of the grinding pipe, the frozen charge is loosened and detached from the inner wall of the grinding pipe without causing damage to the tube mill.
The document then discusses a number of “advantageous” aspects of the invention such as: not exceeding a maximum angle of 180° or a maximum angle of 90° (page 2 paragraphs 5 and 6); oscillating the angle of rotation whereby this reciprocating movement causes frozen charge to detach (page 3 paragraphs 3-6); and abrupt braking of the grinding pipe to provide a strong detaching force to detach frozen charge (page 3 paragraph 7 to page 4 paragraph 2). Following this at page 5 it is stated that further details of the invention are described by example and with reference to figures 1-6. It is the opponent’s general submission that claims lack novelty by way of the disclosures of:
a)Figures 2 and 3 and corresponding claims 1 to 3 and/or
b)Figure 4
Figures 2 and 3, claims 1 to 3
According to the document, figures 2 and 3 are considered to show a section through the grinding pipe of a tube mill (page 5 paragraph 4).
Figures 2 and 3 show a grinding pipe 1 surrounded by a drive device 2. The grinding pipe rotates around axis 4 with the hatched region 5, representing frozen charge. At the end of paragraph 4 on page 6, and in paragraphs 1, 2 and 4 of page 7 respectively the document states:
In FIG 2, the center of gravity of the frozen charge 5 has been deflected in relation to a starting position indicated by φ0 = 0° by the angle of rotation φ to an angle of rotation indicated by φ1.
FIG 3 shows a frozen charge 5 of which the center of gravity has been deflected by the angle of rotation indicated by φ2. The direction of rotation illustrated in FIG 3 is opposite to the direction of rotation from FIG 2.
Deflections in a positive angle of rotation range φ0 < φ <= 180° and deflections in a negative angle of rotation range -180 < φ < φ0 are considered below. Accordingly, φ1 in FIG 2 is a positive angle of rotation φ, and φ2 in FIG 3 is a negative angle of rotation φ…
If a frozen charge 5 is discovered, the frozen charge 5 is detached according to the invention… by the drive device 2 of the grinding pipe being controlled is such a way that the frozen charge is detached in a targeted manner by varying the angle of rotation φ and the speed of rotation of the grinding pipe 1...
I note that claims 1 to 3 of the document simply correspond to that disclosed in the last two paragraphs of the text I have identified immediately above.
In considering the construction of the claim the opponent submitted that each of the claims of the application are directly only to a part of a drive cycle of the grinding pipe. While I have no problem accepting this general submission I make note that such a construction is to be tempered by the issues I discussed earlier. In this regard, while the claims may simply relate to only a part of a drive cycle, it is the case that that part of the drive cycle constitutes a method which involves only positive torque used to detach a frozen charge.
This consideration is important to the understanding of the disclosures of figures 2 and 3. In this regard, while it could be said that figures 2 or 3 disclose a method of varying the angle of rotation of a grinding pipe where the driving torque is always positive and there is only one direction of rotation (i.e. the motion of the grinding pipe from φ0 towards φ1 or φ2), there is no discussion in the document that this motion is to detach a frozen charge as required by the claims. These figures appear to simply demonstrate the schematic appearance of a frozen charge within a grinding pipe and show how, in removing the frozen charge in some targeted manner by varying angle of rotation and speed, the angle φ is defined.
There is clearly a broad disclosure suggesting the detachment of charge 5 by varying the angle of rotation and speed of the grinding pipe (page 7 paragraph 4 and claim 2). However there is no information to direct the skilled addressee to a particular torque profile, and in particular whether the torque profile is: always positive; positive and zero; or positive and negative. Furthermore there is no information in this disclosure to direct the skilled addressee to movement which is in only one direction, or involves rotation in both directions. As noted above, there is no suggestion that the movement depicted in figures 2 and 3 involves a method used to remove frozen charge. In this regard the directions provided in the document fall short of that required by the tests identified in The General Tire case as there is no flag planted at the precise destination. In other words the parts of the document identified above fail to disclose a method to remove frozen charge involving applying an always positive torque which results in motion in only one rotational direction.
Figure 4
Figure 4 shows a possible rotary movement of the grinding pipe for targeted detachment of a frozen charge according to a preferred embodiment.
The document at page 8, paragraph 2 provides a description of figures 4 and 5 which disclose similar oscillating motion profiles for a grinding pipe:
FIG 4 and FIG 5 show schematically the deflection of the grinding pipe 1 by the angle of rotation φ for targeted detachment of a frozen charge plotted over time t. In order to detach the frozen charge 5 from the inner wall of the grinding pipe 1, the grinding pipe 1 is deflected in a targeted manner from a starting position and then oscillated sinusoidally about the angles of rotation φ1 and φ2. In the example shown, the starting position is at φ0 = 0° but can also be defined differently.
Figure 4 depicts a method of removing frozen charge by way of showing the displacement of the centre of mass of the frozen charge as a function of time. While not expressed in the form of applied torque I consider it apparent that a positive torque phase must exist such that the grinding pipe undergoes deflection from φ0 = 0° to φ1. Support for this approach is found in the evidence in support where Mr Jenkins provides a drawing and at paragraph 11 states:
“I have drawn in the image below an approximation of the torque T that would be applied to cause the angular displacement shown in Fig. 4. In the region drawn, the torque T is varying (always increasing), is always positive and does not cause any direction change (angular displacement is always increasing).”
The opponent submits that this first “phase” of the depicted oscillatory method provides a method for detaching a frozen charge from an inner wall of a grinding pipe comprising an always positive torque applied so that the grinding pipe does not change direction.
The entirety of the disclosure in regard to this figure speaks of oscillations being used as part of the method for removing charge, wherein the oscillations clearly involve a direction change. As disclosed:
In order to detach the frozen charge 5 from the inner wall of the grinding pipe 1, the grinding pipe 1 is deflected in a targeted manner from a starting position and then oscillated sinusoidally about the angles of rotation φ1 and φ2. (page 8 paragraph 2)
It is possible for the grinding pipe 1 to oscillate about one or more positive angles of rotation φ1. It is also possible for the grinding pipe 1 to oscillate about one or more negative angles of rotation φ2. (page 8 paragraph 4)
In this regard, the disclosure of grinding pipe movement in relation to figure 4 is reflected in the disclosure earlier in the document whereby the invention is discussed in the context of an advantage (page 2 paragraph 4):
By targeted variation of the rotary movement, that is variation of acceleration and direction of rotation of the grinding pipe, the frozen charge is loosened and detached from the inner wall of the grinding pipe without causing damage to the tube mill.
What appears to be clearly taught by the document is the use of direction changes to remove frozen charge. While the phase identified by the opponent involves only positive torque and involves only movement in one direction, there is no disclosure in respect of figure 4 to suggest that this first phase of movement of the grinding pipe forms a method used to detach frozen charge as required by the claim. It follows that there is no flag planted by the document at the precise destination of a method to remove frozen charge involving the use of always positive torque and no direction changes.
Other disclosures
There were some other disclosures in the document discussed at the hearing that warrant discussion as part of this decision. A first disclosure is that of figure 6 which depicts abrupt braking actions.
In describing figure 6, the document at page 9 paragraph 2 states that “A change in direction of rotation can also take place”. Such a disclosure suggests that a method might involve braking and no changes of direction. Regardless there is no disclosure of an always positive torque applied during such a method.
Following the description of figure 6 there is a summary of the “basic idea of the invention” which suggests that the method of rotation of the grinding pipe to remove charge involves:
…repeated variation of the speed of rotation of the grinding pipe 1 and if appropriate by abrupt braking of the grinding pipe 1… (page 9 paragraph 4)
For reasons already discussed, the variation in speed of rotation fails to provide a clear and unmistakable direction to the claimed feature of an always positive torque being applied so that the grinding pipe does not change its rotational direction.
Summary
In accordance with the discussion above claim 1 is novel. Claims 2-8 add further features to those defined in claim 1 and are therefore also novel.
Inventive Step
The test for obviousness was provided by Justice Aicken in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12 at [45]; 148 CLR 262 at 286 as follows:
“The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.”
The High Court in Aktiebolaget Hässle v Alphapharm Pty Ltd [2002] HCA 59 at [51]- [53]; 212 CLR 411 at [51]-[53] approved this approach, in addition to that taken in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157 at 187 in which Graham J had posed the question:
“Would the notional research group at the relevant date in all the circumstances directly be led as a matter of course to try [the claimed invention] in the expectation that it might well produce a useful [desired result]?”
The usual approach to determining inventive step is the problem-solution approach. Once the problem has been formulated and the common general knowledge and the prior art base has been determined, the question of whether the claimed solution is obvious must be addressed.
In determining the problem or ‘starting point’ for considering inventive step, I am mindful of the words of the majority of the Full Court in AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99 at [202]-[203] as follows:
“If the problem addressed by a patent specification is itself common general knowledge, or if knowledge of the problem is s 7(3) information, then such knowledge or information will be attributed to the hypothetical person skilled in the art for the purpose of assessing obviousness. But if the problem cannot be attributed to the hypothetical person skilled in the art in either of these ways then it is not permissible to attribute a knowledge of the problem on the basis of the inventor’s “starting point” such as might be gleaned from a reading of the complete specification as a whole.”
In other words, the Full Court has stated that when formulating the problem it is not permissible to incorporate information that is not available to the person skilled in the art as either common general knowledge or information available under section 7(3).
The problem
As I have mentioned earlier in this decision, the specification at page 1 discusses the known phenomenon of frozen charge in tube mills. It is desirable to remove frozen charge as this charge may fall from a height and cause damage to the mill. The specification then discusses methods previously known for removing this frozen charge including the use of air compressed hammers and oscillation about an angle of rotation of the grinding pipe. The specification notes that this oscillation is an undesirable motion in mills driven using a geared drive because back-lash created by reversed rotation places forces on gear teeth which leads to decreased drive train lifetime.
To me the claims do not address the problem related to the falling of frozen charge as they do not recite any maximum angles of rotation. Instead, the claims include the feature of always positive torque resulting in rotation in only one direction. On this basis it is clear that they are directed to the problem of back-lash in gear driven tube mills when removing frozen charge using oscillation about an angle of rotation.
Furthermore, I consider it reasonable to formulate the problem as above as I see no basis to conclude that an aspect of this problem is not either common general knowledge or s7(3) material. In this regard the prior art provides for removing charge using oscillations about an angle, and I consider it reasonable to infer that a person skilled in the art would be well aware of back-lash in geared drive mechanisms.
The hypothetical person skilled in the art
In Root Quality v Root Control Technologies Pty Ltd (2000) 49 IPR 225 at [71], Finklestein J held that the skilled addressee would have the following characteristics:
“In Catnic Lord Diplock said (at 242) that skilled addressees are “those likely to have a practical interest in the subject matter of [the] invention”. A variety of people may have that interest. There are those who might wish to make or construct the invention, those who may wish to compound the invention and those who may wish to use the invention.”
There was some discussion at the hearing as to whether the opponent’s expert, Mr Jenkins, was a person skilled in the art. The opponent submitted that before the priority date Mr Jenkins had extensive knowledge relevant to the present application. Basis for this submission can be found in Mr Jenkins’ declaration at [1] where he stated:
“I have extensive experience in relation to the design, construction, commissioning and operation of tube mills, as detailed in my Resume, which is attached as exhibit GJ1 to my statutory declaration.”
The applicant argued that review of Mr Jenkins’ resume suggested no particular experience whatsoever in the design or operation of tube mills. Instead the applicant pointed out that the resume made it clear that the expert was generally experienced in electrical engineering and control systems and in the oil and gas, mining and power generation industries.
I accept the applicant’s general characterisation that the resume is silent in regards to specifically listing involvement in work related to tube mills. However, it remains that I am presented with uncontroverted and clear evidence from the expert that he was extensively experienced in the relevant field. While his resume does not list this particular involvement to support the statement provided in the declaration, it does provide details of sites where he worked and the type of work conducted that does not appear inconsistent with his statement. I would expect for that matter, a resume to be reasonably general in this way and not necessarily list all of the specific technological aspects of work the person has been involved in during their employment.
Therefore I am satisfied that the evidence establishes that Mr Jenkins is an expert in the field of tube mills and would have an interest in constructing and using the invention.
The prior art base (ascertain, understand and regard as relevant)
The opponent relies on AU 2005227083 to establish obviousness by submitting that each of the claims lacks an inventive step in view of this document.
According to subsection 7(3), documentary information relevant to the assessment of inventive step must be information that the person skilled in the art, before the priority date of the claims, could be reasonably expected to have ascertained, understood and regarded as relevant. In regard to this document the opponent simply submits that ascertainability may reasonably be inferred.
Relevantly, the concept of ascertaining documents in the context of a diligent searcher seeking solutions to a problem is well summarised in Rohm and Haas Company v Nippon Kayaku Kabushiki Kaisha and Sankyo Company, Limited[1997] APO 40 where the Delegate of the Commissioner stated with reference to patent documents:
"A document would be ascertained if it was published in such a manner or form that it could reasonably have been expected to be found by a person skilled in the art. A patent document dealing with the same technical issues would prima facie have been ascertained by a person skilled in the art.”
The document deals with the same issue of removing frozen charge from a tube mill and it is relatively recent. Its abstract contains relevant keywords such as: grinding pipe, detaching, charge, modification and speed. I conclude that it can be inferred that the document could have been ascertained, and it is clear that it would have been understood by a person skilled in the art. I am also of the opinion that the document could reasonably have been regarded as relevant. It is addressed to a broader but similar problem of seeking a simple and efficient method for removing frozen charge from tube mills (page 2 paragraph 2).
Hence, the document AU 2005227083 is part of the prior art base for consideration of inventive step.
Was the invention obvious?
As discussed above in regard to novelty, the document fails to disclose a method which involves controlling the driving device of a grinding pipe to detach frozen charge whereby the torque applied is always positive so that the grinding pipe does not change its rotational direction.
Having regard to the declaratory evidence provided I note that Mr Jenkins’ statements in regard to claim 1 and its features assert a lack of novelty in the claim ([9]-[13] of his declaration). Mr Jenkins then discusses dependent claims suggesting why he would have considered them either disclosed or “normal and logical” in view of the document ([14]-[24]). Importantly, there is no evidence provided as to any steps a person skilled in the art might take to arrive at the features of claim 1 that are not disclosed in the document. In view of this lack of evidence, the opponent submitted that the teachings of the document themselves would be freely followed to arrive at the invention of claim 1.
Turning to the document, the clear teaching for controlling the rotation of the grinding pipe to detach frozen charge is to use oscillation about an angle of rotation. Such a control method would likely involve positive and negative torque and clearly would involve changes in rotational direction. There are general teachings to vary the angle of rotation and the speed of the grinding pipe however as discussed at [61] there appear to be a number of ways that one might carry out such a direction. For example, rotation could be in one direction or both directions, and a torque profile could be always positive, positive and zero, or positive and negative. Additionally, there is a suggestion in regard to figure 6 that abrupt braking can be used and that in using such a technique, a change in direction of rotation can also take place. Again with this technique there is no disclosure of what type of torque profile might be applied.
Based on this analysis, I see no particular teaching that would appear to directly lead the person skilled in the art as a matter of course to try to remove frozen charge using a torque that is always positive such that there is no change in rotational direction. There are a range of possibilities available in light of the teachings of the document, wherein there is no explicit or implied information within these teachings to lead the person skilled in the art to choose a particular one of the possible options in a routine manner in attempting to solve the identified problem.
Therefore the invention defined in claim 1 involves an inventive step. Claim 2-8 add further features to those of claim 1 and are therefore also inventive.
Conclusion
The opposition is successful. Claims 1-6 lack fair basis. As the matters can be overcome by amendment I will allow a period of two months for the applicant to propose amendments.
Costs
The applicant has been unsuccessful in defending the application and I can see no reason why costs should not follow the event. I will award costs against them.
Dr N.R. Madsen
Delegate of the Commissioner of Patents
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