Simco Mining Products and Services Pty Ltd v CQMS Pty Ltd
[2019] APO 5
•1 February 2019
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Simco Mining Products and Services Pty Ltd v CQMS Pty Ltd [2019] APO 5
Patent Application: 2015203529
Title:Heavy Duty Excavator Bucket
Patent Applicant: CQMS Pty Ltd
Opponent: Simco Mining Products and Services Pty Ltd
Delegate: Dr V. Z. Kolev
Decision Date: 1 February 2019
Hearing Date: 20 November 2017, in Canberra
Catchwords: PATENTS – opposition to grant of a patent – nominated person’s entitlement – clarity – novelty – inventive step – claims define the invention – manner of manufacture – application for a patent of addition – divisional application – additional parent same as divisional grandparent – operation of subparagraph 59(a)(i), section 15, subsection 43(3), section 25, and section 81 – dragline excavator bucket – improvement of the geometry of the bucket – essential features – opposition unsuccessful on all grounds – costs awarded – costs item amount varied
Representation: Counsel for the applicant: Mr Sean Cooper
Patent attorney for the applicant: Mr Matthew Lord of Fisher Adams Kelly Callinans
Patent attorney for the opponent: Mr Daniel Fox of Ahearn Fox Patent & Trade Mark Attorneys assisted by Mr Allen Evans, consultant
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2015203529
Title:Heavy Duty Excavator Bucket
Patent Applicant: CQMS Pty Ltd
Date of Decision: 1 February 2019
DECISION
The opposition is unsuccessful on all grounds. Subject to appeal, I direct that the application proceeds to grant.
I award costs according to the amounts specified in Schedule 8, except item 11 – “Preparation of case for hearing” of Part 1 – “Costs”, against Simco Mining Products and Services Pty Ltd.
With respect to item 11 – “Preparation of case for hearing” of Part 1 – “Costs”, I award costs to the amount equal to 5 (five) times the amount specified in Schedule 8 against Simco Mining Products and Services Pty Ltd.
REASONS FOR DECISION
Throughout this decision, unless explicitly stated otherwise, any reference to an Act or a section, subsection, etc. of an Act refers to the Patents Act 1990 (the Act), and any reference to Regulations or a specific regulation refers to the Patents Regulations 1991 (the Regulations).
Background
The matter relates to patent application 2015203529 (the Application) in the name of CQMS Pty Ltd (the Applicant). The Application is a divisional application of 2014227457 (now a granted patent, the Divisional Parent) which, in turn, is a divisional application of 2008202822 (now also a granted patent). At the same time, the Application is an application for a patent of addition to 2008202822 (the Additional Parent) which is also its divisional grandparent. The Application claims a priority date of 26 June 2008.
The Application was advertised as accepted on 26 November 2015. A notice of opposition to grant was filed on 27 February 2016 (after the end of the opposition period) by Simco Mining Products and Services Pty Ltd (the Opponent). On 29 February 2016 the Opponent requested extension of time under paragraph 223(2)(a) to file a notice of opposition which request for extension was later granted.
The statement of grounds and particulars (the SGP) was filed on 25 May 2016, followed on 27 May 2016 by the SGP schedule and the documents mentioned in the SGP. On 07 June 2016, the Applicant filed a letter requesting further and better particulars. On 09 June 2016, a Delegate issued a request for further and better particulars for the grounds of novelty and inventive step, noting that otherwise these two grounds will be dismissed. On 17 June 2016, the Opponent filed a “Statement of Further and Better Particulars”, which was considered by a Delegate as a request to amend the SGP. On 27 June 2016, the Applicant requested the opposition to be dismissed with respect to the grounds of novelty and inventive step as they still considered the amended particulars insufficient. On 06 July 2016, a Delegate directed the Opponent to provide further and better particulars in relation to several of the prior art documents. On 07 July 2016, the Opponent filed a “Second Statement of Further and Better Particulars”, again considered by a Delegate as a request to amend the SGP which was allowed on 09 August 2016.
The evidence in support was completed on 24 August 2016. The evidence in answer was completed on 30 November 2016. On 01 February 2017, the Opponent filed a letter constituting submissions that the evidence in answer is not admissible. On 08 February 2017, a Delegate issued a letter noting that no evidence in reply was filed. On 09 February 2017, the Opponent filed a declaration by Mr Ian Robert Tannahill, a Patent Attorney, stating that the letter of 01 February 2017 is, in fact, the evidence in reply. On 20 February 2017, the Applicant filed a letter asserting that what was filed on 01 February 2017 is not evidence, but submissions and must be treated as such. On 23 February 2017, a Delegate issued a letter stating that the Opponent’s letter sent on 01 February 2017 will indeed be treated as submissions which I will refer to as the Opponent’s Submissions in Reply.
The matter was originally set to be heard by way of written submissions with the Opponent’s submissions in support due on 24 May 2017, however this was later changed to an oral hearing which, for various reasons, was deferred to its final date of 20 November 2017.
According to the Regulations, in particular paragraphs 5.20(4)(b) and (c), respectively, “the opponent must file a summary of submissions at least 10 business days before the hearing” and “the applicant must file a summary of submissions at least 5 business days before the hearing”. The parties were also reminded of these requirements in the hearing notice issued to both parties on 02 August 2017. On 10 November 2017, i.e. six business days before the hearing, the Applicant filed a letter stating:
“The Opponent’s submissions were therefore due by Monday, 6 November 2017. However, to date, the Opponent does not appear to have filed any submissions.
The Opponent’s Evidence in Support in this opposition consists only of a short (three paragraph) statutory declaration by Martin Simpson, and 39 prior art documents that were referred to in its Statement of Grounds and Particulars, the relevance of which the Opponent has, in our respectful submission, failed ever to properly particularise or clarify.
Consequently, despite the hearing of this opposition now being only days away, because the Opponent has failed to file any submissions, the Applicant remains largely in the dark as to the case the Opponent intends to present, which the Applicant will be required to answer, at the hearing.”
The Applicant also requested “clarification as to when (i.e. the deadline by which) the Applicant’s submissions must be filed, given that the Opponent has failed to make any focussed attempt to properly articulate the case it intends to bring in this opposition”. In my letter in response dated 10 November 2017, I quoted the relevant parts of regulation 5.20, and concluded that “the deadline for filing the applicant’s summary of submissions is not related to whether the opponent complies with this regulation or not”.
On 10 November 2017, i.e. six business days before the hearing, the Opponent filed a “Summary of Submissions on Behalf of the Opponent” (the Opponent’s Summary or OS). On 15 November 2017, i.e. three business days before the hearing and three business days after the Opponent’s Summary, the Applicant filed a “Summary of the Applicant’s Submissions” (the Applicant’s Summary or AS). At the beginning of the hearing, the Opponent filed directly with me in paper a “Summary of Reply on Behalf of the Opponent”. I do not consider that such an additional summary of submissions is provided for by the Regulations. Hence these are, in fact, submissions filed out of time (see paragraph 5.20(4)(b) quoted above) and I will refer to them as the Out of Time Submissions or OTS.
10. During the hearing, a point of contention between the parties arose related to the scalability and taking measurements from drawings in published patent specifications. Since this issue did not appear to be fully addressed in the parties’ written submissions, at the hearing I made an oral direction which I confirmed in writing in my letter issued on 22 November 2017:
“As agreed at that hearing, I direct as follows:
·Both parties have until 29 November 2017 to file additional submissions specifically addressing the issues related to scaling and extracting dimensional information (e.g. ratios) from drawings provided in a patent specification.
·The submissions must be filed via Objective Connect.”
11. Following this direction, the Opponent filed “Further Submissions on Behalf of the Opponent (Drawings)” (the Opponent’s Submissions on Drawings) and the Applicant filed “The Applicant’s Brief Submissions in Respect of Taking Measurements and Scaling from Drawings in Prior Art Patent Documents” (the Applicant’s Submissions on Drawings).
12. After the hearing, on 22 November 2017, the Opponent filed unsolicited new evidence. In a letter issued on 23 November 2017, I informed both parties, that such new evidence can only be introduced in the opposition under regulation 5.23 and that I will consider the new evidence and if I decide to admit it into the opposition, I will proceed according to the Regulations.
13. Relevantly, the present opposition is with respect to the Application as accepted and is based on the SGP as amended on 09 August 2016.
Applicable Law and Onus
14. On 15 April 2013, the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 commenced which resulted in significant amendments to the Act and Regulations affecting, inter alia, the standard of proof required for an opposition to succeed. For patent applications filed on or after the above commencement date, subsection 60(3A) applies:
“If the Commissioner is satisfied, on the balance of probabilities, that a ground of opposition to the grant of the standard patent exists, the Commissioner may refuse the application.” (emphasis added)
15. The Application was filed on 24 June 2015, hence subsection 60(3A) applies to the instant opposition. In addition, the filing date of the Application being after 15 April 2013 also means that the Application was examined under the amended provisions of the Act and Regulations following the Raising the Bar Act and the same are also applicable to the present opposition proceedings.
16. It is well settled that the Opponent has the onus of establishing the facts supporting the grounds of opposition, and this applies even though the standard of proof is “the balance of probabilities”.
Grounds of Opposition and Evidence
Grounds of opposition
17. From the outset, I must make the general observation that the precise boundaries of the Opponent’s case could have been articulated in a much clearer manner. In that respect, I consider that the SGP and the Opponent’s submissions could have been much more explicit and helpful in better segregating the specific grounds of opposition and the corresponding relevant reasoning.
18. Furthermore, when during the hearing, I asked the Opponent whether they press all grounds and issues as per the SGP and their written submissions, the answer was that it would depend on what happens in respect of two documents discussed between the parties, hence it was agreed that, at that stage, I would proceed on the basis that nothing is dropped. I find this very unusual. Without going into any deeper analysis of the situation, the only reasonable conclusion I can draw for the purposes of my decision is that even on the day of the hearing, for whatever reasons, the Opponent was not entirely clear of the exact boundaries of their case. In this decision, I will discuss what I consider the Opponent’s case to be, based on what could reasonably be ascertained from the SGP and their submissions.
19. Regarding the grounds of opposition, the SGP states:
“2. The Grounds Of Opposition are as follows:
2.1. The nominated person is not entitled to the grant of a patent for the invention;
2.2. The invention is not a patentable invention because it does not comply with subsection 18 (l)(a), (b), (c) or (d).
2.3. The specification filed in respect of the complete application does not comply with subsection 40 (2) or 40 (3).” (emphasis added)
20. As it will become apparent later in this decision, the Opponent generally puts a lot of emphasis on language precision. Hence, the presence of “or” in the above statements indicates that the Application is opposed on at least one ground from each of paragraphs (b) and (c) of section 59 (this section is reproduced later in the decision) without actually stating the exact grounds of opposition. As the above statements do not clearly identify the grounds on which the Opponent relies, I will limit my consideration to the grounds available to the Opponent that appear particularised in the SGP, and they are listed below:
- The nominated person is not entitled to a grant of a patent for the invention – subparagraph 59(a)(i);
- Claims are not clear – subsection 40(3);
- Claims do not define the invention – paragraph 40(2)(b);
- Lack of novelty – subparagraph 18(1)(b)(i);
- Lack of inventive step – subparagraph 18(1)(b)(ii); and
- Not a manner of manufacture – paragraph 18(1)(a).
21. The SGP also states that “[t]he opponent will make submissions that Claim 1 is not clear and is not fairly based” (at [7.1], original emphasis), however I note that the ground of fair basis does not appear particularised and furthermore fair basis is not a requirement under the Act as applicable to the Application.
22. The Opponent’s submissions also include allegations that the claims are not succinct. Importantly, I note that this ground is not present in the SGP. In addition, it does not appear that this ground could potentially have any merit as I will briefly discuss at the end of my consideration of claim interpretation and clarity.
Evidence on file
23. On 08 November 2017, I issued a letter to clarify to both parties that the evidence in the opposition consists of the documents filed as follows:
Evidence in support consisting of:
·A declaration by Mr Martin Simpson dated 24 August 2016 (Simpson) with exhibit MS-1; and
·Documents D1 to D39 mentioned in the SGP and filed on 27 May 2016.
Evidence in answer consisting of:
·A declaration by Mr Bruce Alexander Leslie dated 29 November 2016 (Leslie) with exhibit BAL-01.
Evidence in reply was not filed.
24. I do not consider the Opponent’s Submissions in Reply regarding the inadmissibility of the evidence in answer persuasive. Firstly, I am unsure why the Opponent believes that the evidence in answer must be limited to directly answering the evidence in support. If this were true, then an applicant would not be entitled to file any evidence at all if evidence in support was not filed. This is clearly not the case and an applicant is entitled to file any evidence they see fit in order to address the case against them (i.e. as outlined in the SGP and supported by the evidence in support, if any). Secondly, it appears at times that the Opponent is confusing the relevance of the evidence with its admissibility. Whether the evidence in answer is relevant goes to the weight I can give it, however it does not affect its admissibility. In conclusion, I have no reasons to consider that the evidence in answer is inadmissible.
25. In addition, the Opponent’s Submissions in Reply do not appear to clearly express any serious concerns about the suitability of Mr Leslie to give expert evidence, with the exception of the mentioning at [1.7] that “there is nothing in the Leslie declaration to suggest that Mr Leslie is a manufacturer of buckets for earthmoving or mining machinery”. I note that Mr Leslie begins his declaration (see [1]) with the statement that he has “approximately 21 years of experience relating to dragline buckets”. I also note that he is one of the inventors listed in the Application (see e.g. Leslie at [30]). Based on paragraphs [1]-[7.6] of his declaration, I consider that Mr Leslie is technically qualified to give evidence in this opposition, although he does not appear to be completely independent (see Leslie at [28]-[32]). Given that he is one of the listed inventors, I must read his evidence with some caution especially when it relates to his interpretation of the more specific features of the claimed excavator bucket.
26. As I already mentioned, on 22 November 2017 the Opponent filed unsolicited new evidence. Introducing new evidence under regulation 5.23 was discussed in Merial Limited v Bayer Intellectual Property GmbH [2015] APO 16:
“I conclude that a decision under regulation 5.23 must have regard to the nature of the information and whether the information is likely, if not certain, to change the outcome of the opposition in a significant way.” (at [24])
27. From the new evidence (i.e. the declaration of Mr Daniel Patrick Fox dated 22 November 2017, see e.g. [6], [8], [13-15], [17-18], and [20]) and from the accompanying letter, it appears that the new evidence was submitted solely for the purpose of supporting the Opponent’s submissions that the excavator bucket referred to in Simpson and shown in exhibit MS-1 was publicly disclosed. As it will become evident later in my discussion of novelty, the question of public disclosure or otherwise of this excavator bucket is not relevant to the outcome of the opposition. It follows that I have no reasons to introduce the new evidence in the opposition under regulation 5.23.
28. Apparently, the fact that the new evidence is unlikely “to change the outcome of the opposition in a significant way” was also appreciated by the Opponent. While they explain that
“The Fox Declaration (including the attached correspondence) [i.e. the new evidence] is not ‘Evidence in Support’ of the Opposition. Rather, it is lodged to show that the Patent Applicant’s submission that the presence of the Opponent’s Bucket at Curragh mine (as stated in the Simpson Declaration) was not public is false and misleading – and that the Patent Applicant knew that to be the case.” (the accompanying letter at [1.11]),
they also assert that:
“Even without Mr Fox’s Statutory Declaration, the Patent Applicant’s submission has no basis in light of the evidence that is before the Hearing Officer.” (the accompanying letter at [1.6])
29. Based on the above discussion, for the purposes of deciding the opposition, I will not consult the new evidence under regulation 5.23.
The Specification of the Application
30. The specification describes the field of the invention as follows:
“This invention is concerned with improvements in excavator buckets.
The invention is concerned particularly, although not exclusively with excavator buckets having a support arch.” (page 1, lines 4-7)
31. In the section “Background of the invention”, it is stated that:
“Generally speaking, most draglines are a compromise between such factors as boom length, bucket and rigging mass and bucket payload capacity. Operational efficiencies of a dragline bucket can be measured according to a number of parameters including drag energy (or specific drag energy) and total sum load of the bucket, rigging and payload…” (page 1, lines 16-20)
“Since the early 1900’s, there have been many modifications to bucket designs and rigging configurations in an endeavour to achieve greater excavation efficiencies in terms of energy consumption and excavation rates.” (page 2, lines 2-4)
“Excavator bucket designs generally are of an arched or archless design with some excavator operators preferring an arched design at the expense of reduced payload to obtain a more robust bucket with lower maintenance requirements. Generally the mass of an archless bucket and rigging is less than that of an arched bucket and associated rigging largely due to the exclusion of the arch over the front of the bucket.” (page 2, lines 7-12)
32. In discussing some examples of prior art archless and arched bucket designs, the specification comments that:
“The archless buckets referred to above are generally of a low mass and are fabricated from steel plate components with generally parallel side walls, a rearwardly inclined rear wall and, with the exception of United States Patents 3,247,606 and 3,247,607 which have side walls perpendicular to a floor, all others describe outwardly and upwardly inclined side walls. The geometry of these buckets was claimed to increase bucket payload and to provide less frictional resistance between the earth mass and the bucket during loading.
The arched buckets described above generally comprise generally slab sided structures with side walls perpendicular to a floor and an arcuate transition between the floor and a rear wall which may incline outwardly or inwardly towards the top thereof. The arched buckets generally have a more robust construction than the archless buckets described above, and generally are fabricated from sheet steel components and cast components such as the bucket lip, cheek plates, the arch member and/or arch mountings. Reinforcing members such as trunnion mounting plates and a cap rail formed along the upper edges of the side and rear walls were generally fabricated from sheet steel.
The above-mentioned prior art excavator buckets are illustrative of on-going endeavours for over a century to produce more efficient buckets while over that same period accommodating demands for buckets with greater load capacity. In the many, many patents granted for improvements in excavator buckets over the last century or so, most of those inventions dealt with single incremental improvements which may have improved one aspect of the performance of the bucket but often at the expense of one or more other functional or structural aspects of the bucket whereby the overall or net benefits represented only a marginal improvement.” (from page 2, line 23 to page 3, line 19)
33. The specification then discusses in more detail the Applicant’s own prior art bucket:
“Some of the shortcomings of the prior art excavator buckets were addressed in United States Patent 6,834,449 to the same assignee. This patent described a light-weight high capacity archless bucket which exhibited a payload increase of about 10% over competitors’ conventional buckets along with a reduction in drag energy of about 30% of that of a conventional bucket while at the same time reducing bucket fill time by 20%. This bucket was robust in nature with a cast front lip, cheek plates and junction members between side and rear walls to provide a smooth arcuate transition therebetween to reduce frictional engagement with a mass of earth during filling and emptying of the bucket. The bucket had a wide, relatively shallow configuration when compared to conventional excavator buckets at that time and was distinguished by a rear wall being higher than that adjacent side wall portions with a steep arcuate taper between the floor and the top of the rear wall.
The bucket of United States Patent 6,834,449 had a side wall height : lip width ratio of about 1 : 4 compared with conventional prior art buckets having a ratio of about 1 : 1.5 to 1 : 2.
In plan view, the side walls converged toward the rear wall such that the rear portion of the bucket was about 80% of the effective width of the opening between opposed cheek plates.
While generally effective for its intended purpose, the excavator bucket described in United States Patent 6,834,449 was suited more to lighter, softer earth types rather than harder rock filled earth types found in certain regions.” (from page 3, line 20 to page 4, line 12)
34. Next, the specification states that:
“Accordingly, it is an aim of the present invention to overcome or alleviate at least some of the shortcomings of prior art excavator buckets and otherwise to provide a robust heavy duty excavator bucket which still exhibits the improved operational efficiencies of the light-weight buckets described in United States Patent 6,834,449.” (page 4, lines 13-17)
35. In essence, the invention is concerned with the improvement of the geometry of the excavator bucket as described with reference to the drawings and defined in the claims. Figures 1, 2, 4, and 5 illustrate different views of the bucket of the invention and are reproduced below.
36. The specification ends with 22 claims. Since claims 1 and 2 refer directly to “any one of the claims in Australian Patent No. 2008202822” (the Additional Parent), I also consider it necessary to reproduce the only independent claim of the Additional Parent, and that claim reads:
“1. An excavator bucket comprising:-
a generally rectangular floor, opposed side walls and a rear wall;
a lip member extending transversely of a front portion of said floor,
said lip member including spaced mountings for replaceable wear members;
opposed wing members adjacent respective front portions of said side walls, said wing members including mountings for replaceable wear members, said wing members each including a drag rope mounting located forwardly of a front edge of said lip member;
said excavator bucket characterized in that said side walls extend substantially parallel to each other and incline outwardly towards respective upper regions thereof at an angle of from 5° to 20° relative to a plane perpendicular to a plane of said floor,
said excavator bucket further characterized in that a ratio of lip width to side wall height in the region of said lip member is in the range of from 3.1 to 3.6 : 1,
and wherein the ratio of the length of the floor to the width of the floor is in the range of from 1.0 to 1.25 : 1.0.”
37. With respect to the claims of the Application, I have reproduced below claims 1 and 2 as well as the independent claims 6, 7, 10, 11, and 12:
“1. An excavator bucket as claimed in any one of the claims in Australian Patent No. 2008202822, wherein:
the ratio of lip width to side wall height in the region of said lip member is further in the range of from 2.5 : 1.0 to less than 3.1 : 1.0 and from greater than 3.6 : 1.0 to 4.4 : 1.0; and
the ratio of the length of the floor to the width of the floor is further in the range of from 0.8 : 1.0 to less than 1.0 : 1.0 and from greater than 1.25 : 1.0 to 1.6 : 1.0.2. An excavator bucket as claimed in any one of the claims in Australian Patent No. 2008202822, wherein:
the ratio of lip width to side wall height in the region of said lip member is further in the range of from 2.5 : 1.0 to less than 2.94 : 1.0 and from greater than 3.8 : 1.0 to 4.4 : 1.0; and
the ratio of the length of the floor to the width of the floor is further in the range of from 0.8 : 1.0 to less than 1.0 : 1.0 and from greater than 1.33 : 1.0 to 1.6 : 1.0.6. An excavator bucket comprising:
a generally rectangular floor, opposed side walls and a rear wall;
a lip member extending transversely of a front portion of said floor,
said lip member including spaced mountings for replaceable wear members;
opposed wing members adjacent respective front portions of said side walls, said wing members including mountings for replaceable wear members, said wing members each including a drag rope mounting located forwardly of a front edge of said lip member;
said excavator bucket characterized in that said side walls extend substantially parallel to each other,
said excavator bucket further characterized in that a ratio of lip width to side wall height in the region of said lip member is in the range of:
from 2.5 : 1.0 to less than 2.94 : 1.0;
from 2.94 : 1.0 to 3.8 : 1.0; and
from greater than 3.8 : 1.0 to 4.4 : 1.0.7. An excavator bucket comprising:
a generally rectangular floor, opposed side walls and a rear wall;
a lip member extending transversely of a front portion of said floor, said lip member including spaced mountings for replaceable wear members;
opposed wing members adjacent respective front portions of said side walls, said wing members including mountings for replaceable wear members, said wing members each including a drag rope mounting located forwardly of a front edge of said lip member;
said excavator bucket characterized in that said side walls extend substantially parallel to each other,
said excavator bucket further characterized in that a ratio of lip width to side wall height in the region of said lip member is in the range of:
from 2.5 : 1.0 to less than 2.94 : 1.0; and
from greater than 3.8 : 1.0 to 4.4 : 1.0.10. An excavator bucket comprising:
a generally rectangular floor, opposed side walls and a rear wall;
a lip member extending transversely of a front portion of said floor, said lip member including spaced mountings for replaceable wear members;
opposed wing members adjacent respective front portions of said side walls, said wing members including mountings for replaceable wear members,
said wing members each including a drag rope mounting located forwardly of a front edge of said lip member;
said excavator bucket characterized in that said side walls incline outwardly towards respective upper regions thereof at an angle of from 5° to 20° relative to a plane perpendicular to a plane of said floor,
said excavator bucket further characterized in that a ratio of lip width to side wall height in the region of said lip member is in the range of from 2.5 : 1.0 to 4.4 : 1 and
the ratio of the length of the floor to the width of the floor is in the range of from 0.8 : 1.0 to 1.6 : 1.0.11. An excavator bucket comprising:
a generally rectangular floor, opposed side walls and a rear wall;
a lip member extending transversely of a front portion of said floor, said lip member including spaced mountings for replaceable wear members;
opposed wing members adjacent respective front portions of said side walls, said wing members including mountings for replaceable wear members, said wing members each including a drag rope mounting located forwardly of a front edge of said lip member;
said excavator bucket characterized in that said side walls extend substantially parallel to each other,
said excavator bucket further characterized in that a ratio of lip width to side wall height in the region of said lip member is in the range of from 2.5 : 1.0 to 4.4 : 1.0 and
the ratio of the length of the floor to the width of the floor is in the range of from 0.8 : 1.0 to 1.6 : 1.0.12. An excavator bucket comprising:
a generally rectangular floor, opposed side walls and a rear wall;
a lip member extending transversely of a front portion of said floor, said lip member including spaced mountings for replaceable wear members;
opposed wing members adjacent respective front portions of said side walls, said wing members including mountings for replaceable wear members, said wing members each including a drag rope mounting located forwardly of a front edge of said lip member;
said excavator bucket characterized in that said side walls incline outwardly towards respective upper regions thereof at an angle of from 5° to 20° relative to a plane perpendicular to a plane of said floor,
said excavator bucket further characterized in that a ratio of the length of the floor to side wall height in the region of said lip member is in the range of from 2.0 : 1.0 to 6.5 : 1.0.”
The Law on the Nominated Person’s Entitlement under Paragraph 59(a)
38. The first ground of opposition relates to the nominated person’s entitlement and it is important to consider the relevant statutory requirements in greater detail.
The meaning of subparagraph 59(a)(i)
39. The present opposition to grant is in accordance with section 59 which states:
“The Minister or any other person may, in accordance with the regulations, oppose the grant of a standard patent on one or more of the following grounds, but on no other ground:
(a) that the nominated person is either:
(i) not entitled to a grant of a patent for the invention; or
(ii) entitled to a grant of a patent for the invention but only in conjunction with some other person;
(b) that the invention is not a patentable invention;
(c) that the specification filed in respect of the complete application does not comply with subsection 40(2) or (3).”
40. The Opponent contends that the ground at subparagraph 59(a)(i) that the nominated person is “not entitled to a grant of a patent for the invention” should not be interpreted as limited to considerations under section 15 (this section is reproduced later in the decision) as asserted by the Applicant, but should also include all other circumstances where, under the Act, a patent cannot be granted. In other words, the nominated person is not entitled to a grant of a patent because the patent cannot be granted. This interpretation allows the Opponent to bring as valid considerations under this ground of opposition potential issues related to sections 81 and 64 (see e.g. SGP at [3.3] and [7.4]) which prohibit the grant of a patent under certain circumstances.
41. The Opponent presented an elaborate argumentation to support their proposition, however I do not find this convincing and, in the light of my discussion below, I do not see the need to provide a detailed analysis of the Opponent’s submissions on the matter. Bearing in mind that section 59 should be read as a whole and the text at subparagraph 59(a)(i) should be interpreted in the context of the other parts of this section, I disagree with the Opponent’s interpretation for the following reasons.
42. Firstly, if all circumstances where, under the Act, a patent cannot be granted were to be included under subparagraph 59(a)(i), then this would also apply to the grounds of opposition mentioned at paragraphs 59(b) and (c), thus making them redundant.
43. Secondly, the text in the preamble “but on no other ground” makes it clear that the list of grounds of opposition at 59(a), (b), and (c) is exhaustive. It also implies that even if other grounds or adverse circumstances exist, they are not grounds of opposition. If the Opponent is correct and all circumstances where, under the Act, a patent cannot be granted were to be included as grounds of opposition under subparagraph 59(a)(i), then this leaves open the question of which are the “other ground[s]” as stated in the preamble under which the grant of a patent cannot be opposed?
44. Thirdly, subparagraph 59(a)(ii) states that the nominated person is “entitled to a grant of a patent for the invention but only in conjunction with some other person”. This clearly indicates that, within this subparagraph, the meaning of the expression “entitled to a grant of a patent for the invention” should be limited only to considerations under section 15, since conjoining “some other person” is unlikely to remedy deficiencies under other sections of the Act including, e.g., sections 81 and 64. I have no reasons to consider that exactly the same expression “entitled to a grant of a patent for the invention” should have a different meaning in subparagraph 59(a)(i) as compared to subparagraph 59(a)(ii).
45. Finally, even from a purely semantic point of view, I consider that the expression “the nominated person is … not entitled to a grant of a patent for the invention” puts the emphasis clearly on the entitlement of the nominated person and not on whether a patent for the invention can be granted or not. I conclude that the ground of opposition at subparagraph 59(a)(i) is limited to considerations under section 15.
The compliance with the Act in general
46. The above interpretation of section 59 means that compliance with the Act in general (including sections 81 and 64) is not a relevant consideration under subparagraph 59(a)(i), hence under section 59. Therefore, non-compliance with sections 81 and 64 cannot be a valid ground of opposition, hence it is not open to me to consider in this decision the compliance with these sections per se.
47. However, considering and deciding on the compliance with section 81 (grant of a patent of addition) could, in some circumstances, be required due to the operation of section 25 which states:
“Objection cannot be taken to a patent request or complete specification in respect of an application for a patent of addition, and a patent of addition is not invalid, merely because the invention, so far as claimed, does not involve an inventive step, having regard to the publication or use of the main invention during the prescribed period.”
48. Therefore, a potential non-compliance with section 81 would mean that the Application is not entitled to its status of an application for a patent of addition and this could potentially lead to the finding that the Application does not involve an inventive step (a valid ground of opposition) in light of the Additional Parent as the provisions of section 25 would no longer apply. However, in this particular case, as I will discuss later, the Opponent has not provided any evidence that could potentially support a finding of lack of an inventive step. Therefore, whether the Application complies or does not comply with section 81 is not an issue that could affect the outcome of this opposition and I have no reasons to consider it.
49. The Opponent also states that:
“The opponent intends to lead evidence to show that the applicant was aware of a large number of relevant prior art documents and failed to bring those documents to the notice of the Commissioner of Patents or take them into account and, knowingly deceived the Commissioner and consequently is not entitled to the grant of a patent. Many of those documents are listed below.” (SGP at [3.4])
50. As with sections 81 and 64, I can find no statutory basis for considering such assertions in the present opposition, hence I will not make any further comments on the issue. As far as the documents filed by the Opponent are concerned, I will discuss them as necessary later in this decision.
51. In conclusion, I must emphasise that my decision is with respect to an opposition under section 59, hence my considerations must be strictly limited to the grounds of opposition under this section. It is not open to me to consider and decide on any other matters, including placing a bar to grant for reasons outside section 59 as requested by the Opponent during the hearing in the alternative to their interpretation of subparagraph 59(a)(i).
Claim Interpretation and Clarity under Subsection 40(3)
52. The rules of claim construction are well established and I do not consider it necessary to refer to the relevant Authorities.
53. The Opponent asserts that “the claims of the additional patent application are so affected by ‘lack of clarity’ issues that they are not susceptible to unambiguous interpretation” (OS at [5.1]). In the following, I will discuss the specific clarity and claim interpretation concerns of the Opponent.
“an excavator bucket”
54. The Opponent states:
“The claims of the opposed application (and also those of the two parents) recite ‘an excavator bucket’ but the drawings in all three cases illustrate only dragline buckets. Consequently, the claims are not clear.” (SGP at [7.2])
55. I am unsure as to why, in this particular case, what is illustrated in the drawings can have influence on the claim construction and make the claims unclear. An “excavator bucket” appears to be a well-known term in the art with a well understood meaning:
“In my view, an excavator bucket in the claimed invention relates to a bucket that digs into the ground to excavate materials.” (Leslie at [11])
56. Mr Leslie continues his explanations:
“Dragline buckets are heavy duty excavator buckets that are typically used in strip mining.
… The term excavator bucket is broader than the term dragline bucket and, therefore, a dragline bucket may be a subclass of an excavator bucket.” (Leslie at [11]-[12])
57. I have no reasons to conclude that the use of the term “excavator bucket” makes the claims unclear.
“a generally rectangular floor”
58. The Opponent does not appear to suggest explicitly that the use of the above phrase makes the claims unclear, however they submit that the excavator buckets of the prior art documents D8, D13, D9, and D10 also have generally rectangular floors (see OTS at [7.1]-[7.3], and [8.2]). In order to determine whether the feature defined by the phrase in question is disclosed in the prior art, I need to interpret the phrase and decide on the claim limitations imposed by it.
59. The Opponent’s comments on the issue are provided in OTS at [6.1]-[6.3] as follows:
“The term ‘generally’ is used many times throughout the additional parent specification. For example, ‘generally speaking’, ‘generally parallel side walls’, ‘generally comprise generally slab sided structures’, ‘arched buckets generally have a more robust construction than the archless buckets described above, and generally are fabricated from sheet steel components’, ‘generally fabricated from sheet steel’, ‘while generally effective for its intended purpose’, ‘a generally rectangular floor’, ‘generally chamfered corners’, ‘extended generally parallel to the plane of the bucket floor’, ‘to form a generally planar head’, ‘forms a rigid hollow flange of generally triangular cross-section’, ‘are generally cast as single members’, ‘Table 2 illustrated that overall, each of the buckets tested achieved greater payloads than the conventional “Eartheater” (TM) bucket which generally represents the state-of-the-art for contemporary heavy duty excavator buckets’.
The examiners manual in 2.11.2.3.8 explains that the term ‘generally’ raises similar issues to the term ‘about’. It goes on to say that the word indicates that some degree of variation from the specific is intended. For example, a material that is ‘generally transparent’ includes, but is not limited to those that are totally transparent (although totally opaque would not be included). The degree of variation will depend upon what the person skilled in the art would understand is intended’.
Notably, in the additional parent specification, the consistory statement on page 4 uses the term ‘generally rectangular floor’ and the term ‘substantially parallel’. Thus, there seems to be an intended difference in the quantum of variation from the exact term in the two cases. Notably also, in that consistory statement, the substantially parallel side walls incline outwardly at an angle of up to 20° from the vertical. Thus, the enclosed angle between the ‘substantially parallel’ side walls is up to 40°. It is hard to imagine a person skilled in the art thinking that walls which are substantially parallel could diverge at an angle of up to 40° but that seems to be the case in the description. If it is not the case in the description, then it is hard to believe that the specification properly teaches the invention.” (emphasis added)
60. As best understood, the Opponent might appear to be suggesting that since “substantially parallel” can represent a deviation as high as 40° from perfectly parallel, then “generally rectangular” must encompass similarly high deviations from perfectly rectangular.
61. However, with respect to “generally rectangular” and “substantially parallel”, I also note the emphasised statement above that “there seems to be an intended difference in the quantum of variation from the exact term in the two cases”. This, in essence, means that the 40° variation from perfectly parallel in “substantially parallel” cannot be an indication for the allowable deviation from perfectly rectangular in “generally rectangular”. As this contradicts the proposition in the previous paragraph, the point the Opponent is making here with respect to the phrase “generally rectangular” is not entirely clear to me.
62. At the hearing, the Opponent made further submissions on the issue to the effect, as best understood, that because of the wide ranges defined in the claims, the floor deviations from perfectly rectangular could also be large. I do not find this line of reasoning convincing, as I do not consider the size of the ranges relevant to the interpretation of the feature of “a generally rectangular floor”.
63. The only expert evidence on the issue from Mr Leslie reads:
“In my experience, most excavator buckets have a floor, side walls and a rear wall. The floor defines the bottom of the bucket… In the case where the floor curves up towards the side walls and the rear wall, typically the floor will be defined by a transition point where the floor is no longer substantially horizontal (i.e. forming the bottom of the bucket).
A generally rectangular floor implies that there is a sort of a reasonably definable part of the floor that is rectangular. That is, there is a rectangular area which is clearly floor and not just, for example, part of the rear wall as the floor transitions to the rear wall.” (Leslie at [13]-[14], emphasis added)
64. The feature of “a generally rectangular floor” implies that the floor is substantially flat and this is also confirmed by the above evidence that the floor is the “substantially horizontal” “bottom of the bucket”. However, I am not entirely sure what exactly Mr Leslie means by “reasonably definable”. I can accept his explanations only if the “reasonably definable part of the floor” somehow makes up the majority of the floor area. I do not consider that the example floors drawn below could be characterised as generally rectangular despite the presence of, strictly speaking, “a reasonably definable part of the floor that is rectangular” as illustrated with blue hatching.
65. I note that modern machine parts seldom have simple geometry, hence the presence of the word “generally” which implies some degree of deviation from a perfect rectangle. With that in mind, I consider it important for the proper interpretation the question of how a particular floor, viewed as a flat geometric shape, would be described in words, given that only a limited number of simple geometric shapes have specific names (e.g. circle, rhombus, trapezoid, rectangle, square, triangle, etc.). In my view, a floor viewed as a geometric shape would reasonably be described as being generally rectangular only if it is close enough in appearance to a rectangle, which is, in any event, closer than to any other simple geometric shape. Following this logic, the above drawn example floors would be described as generally triangular and generally circular (or oval), respectively, but neither of them could reasonably be described as generally rectangular.
“said side walls extend substantially parallel to each other and incline outwardly towards respective upper regions thereof at an angle … relative to a plane perpendicular to a plane of said floor”
66. The Opponent states:
“Further, some components are ‘defined’ in terms of themselves, for example, ‘said side walls extend substantially parallel to each other and incline outwardly towards respective upper regions thereof’. That is to say, each side wall inclines outwards towards a portion of itself. This of course is nonsense. Further, claim 1 also recites ‘a plane perpendicular to a plane of said floor’ which is not clear because the floor has an infinite number of planes passing therethrough so that the scope cannot be determined.” (SGP at [7.11])
67. I agree with the Opponent that the features in question could have been defined using a clearer language. However the claims must be construed purposively, even more so if the literal interpretation leads to “nonsense”. What is defined is not an abstract geometric object, but an excavator bucket. I consider that the claim language in question can reasonably be interpreted in only one possible way as discussed below.
68. To the extent that the Opponent’s concerns appear to be related to the use of the indefinite article “a” in the expression “perpendicular to a plane of said floor”, I note that using an indefinite article where plain English would require a definite article is a claim drafting practice often employed to avoid what otherwise may be perceived as a formal antecedent issue. In this case, I consider that the indefinite article “a” is used only because the term “plane of said floor” is mentioned for the first time in the claim. As discussed earlier, the floor is substantially flat, hence there will be only one “plane of said floor” and this will be the plane of said floor which I will simply refer to as the floor.
69. The generally rectangular floor will have two opposite sides that are substantially parallel. The “opposed side walls” start from these two opposite substantially parallel sides of the floor and extend upwardly therefrom. However, the side walls are not perfectly parallel and “incline outwardly” which means that the horizontal distance measured between respective points of the two side walls is increasing in the upward direction “towards respective upper regions” of the side walls.
70. As they “incline outwardly”, the two side walls form an angle within certain defined range (e.g. from 5° to 20°) with respect to a plane perpendicular to the floor. Indeed, there are infinite number of planes that are perpendicular to the floor, however all these planes can be defined starting arbitrarily from one of them and then using translation and/or rotation about an axis perpendicular to the floor. Translation will not change the angle between the side walls and the plane, hence it is not relevant. Rotation as described above will change this angle from 90° when the plane is perpendicular to the two opposite sides of the floor from which the side walls extend, to a certain minimum value when the plane is parallel to these sides of the floor. Since the angle of rotation of the plane is not specified in the claims, the angle between the side walls and the plane will have a meaningful value that indeed can be used to define the outwardly inclination of the side walls only when at its minimum value, i.e. when the plane is parallel to the sides of the floor from which the side walls extend (the maximum value of 90° is fixed and independent of the side walls’ outwardly inclination). Therefore, I consider that this is the correct orientation of the plane for the purpose of claim interpretation.
71. The Opponent has not shown that more than one different reasonable interpretations can be applied to the claim language in question that could result in ambiguities and hence in an indefinite scope.
“a ratio of lip width to side wall height in the region of said lip member”
72. The Opponent states:
“Moreover, claim 1 of the additional parent refers to ‘a ratio of lip width to sidewall height’ so it is not clear whether it is the full width of the lip or half the width or any other one of the infinite number of widths which is to be used in calculating the ratio. Consequently the scope of claim 1, or any other claim appended to the claims of the additional parent, cannot be determined.” (SGP at [7.3], original emphasis)
73. It appears that here the Opponent is putting a lot of emphasis on the use of the indefinite article “a”. I have already discussed this common drafting practice and I consider that the indefinite article “a” is used only because the word “ratio” is mentioned for the first time in the claim. I cannot reasonably envisage any deeper meaning than that, i.e. I do not consider “a ratio” equivalent in meaning to “any ratio”. Similarly, I have no reasons to consider that the terms “lip width” and “side wall height” refer to any lip width or any side wall height other than the full lip width and full side wall height, respectively.
74. During the hearing, the Opponent also submitted that since the side walls are inclined and not vertical, it is unclear how exactly their height is to be measured (e.g. vertical height or height along the sloping side wall). This is a technical question for the person skilled in the art, and Mr Leslie addressed certain aspects of it:
“With regards to side wall height in the region of said lip member, this is taken as the height of the side wall, near the lip member, excluding other features which are connected to the side wall but not primarily associated with its function as a side wall (i.e. an upper extension of the side wall to form an arch support, dump line supports etc.). Excluding features not primarily associated with a side wall accords with the CIMA standards for determining height in bucket capacity (CIMA stands for Construction Industry Manufacturers Association, which is now a part of the Association of Equipment Manufacturers).” (Leslie at [20], emphasis added).
Since inclined side walls in excavator buckets do not appear uncommon (see e.g. the specification at page 2, lines 25-27), I consider it unlikely that the person skilled in the art would be unable to interpret unambiguously the term “side wall height”. The evidence even suggests the existence of a relevant industry standard “for determining height” and I consider that the person skilled in the art would be aware of and follow this standard. Therefore, on balance, I am not satisfied that the issue of the height measurement in case of inclined side walls could render the claims unclear.
The ranges defined in claims 1 and 2 by referring to claims of the Additional Parent and using words such as “the ratio of … is further in the range of from … to … and from … to …”
75. The Opponent argues that:
“Claim 1 at least also does not comply with section 40(3) [presumably, because it is not clear]. The claim purports to append to claims of a different patent which specify a particular range for a particular integer and which in doing so includes that range and an extended range. Thus, the range which is included is the same as the range specified by the additional parent and consequently offends section 64. Meanwhile the range which is outside the range specified in the additional parent cannot be the subject of a claim depending from a claim which specifies a different range. The claim can only be read as ‘characterised in that the ratio of lip width to side wall height is within the specified range and without the specified range[’]. This of course is a nonsense and results in a claim the scope of which cannot be determined.” (SGP at [7.4.], original emphasis)
“Further, and in the alternative, if claim 1 is construed so as not to include the range of claim 1 of the additional parent that the lip width to side wall height is within one range 2.5 to 1 to 4.4 to 1.0 and at the same time in the range 3.6 to 1 to 4.4 to 1.0, then that of course is a nonsense.” (SGP at [7.8], emphasis added)
76. As best understood, I consider that the Opponent’s intention in the above quotation was for the emphasised number “4.4” to read “3.1” as this is what is defined by the wording of claim 1 which could potentially be interpreted as being “a nonsense”. However, it appears that the Opponent again is focusing on the literal interpretation of the claim language, e.g. the use of “and” with respect to the mutually exclusive additional ranges defined in claim 1. On purposive construction, it is manifestly clear that the defined “particular integer” cannot be simultaneously within two mutually exclusive ranges, therefore it must be within either one of the defined ranges instead. I note that similar concerns appear to have been raised by the Opponent with respect to claims 6 and 7 (see OS at [5.20]-[5.27]), and I consider that these concerns must be addressed in a similar fashion avoiding any literal construction leading to absurd.
77. In addition, it appears that the Opponent is concerned that, on one hand, claims 1 and 2 refer to a claim of the Additional Parent which defines certain ranges, but then on the other hand, explicitly define new ranges that do not entirely fit within those certain ranges of the claim to which they refer. As long as the new ranges are clearly and unambiguously defined, I can see no clarity issues. I note that this also applies with respect to the Opponent’s concerns, as best understood, with respect to claims 3 and 4 (see OS at [5.14]-[5.16]). Hence, the question I need to answer is whether the ranges defined in claim 1 (and, similarly, in claims 2 to 4) are clearly and unambiguously defined.
78. Despite the above clarity concerns, the Opponent provides an interpretation of claim 1 (see OS at [5.3]-[5.6]) and concludes that “claim 1 of the additional application defines a single, continuous range for each of the relevant ratios” (OS at [5.7], original emphasis). In response, the Applicant submits that:
“This argument should be rejected as the characterisation of claim 1 of the Opposed Application as defining a single, contiguous range for each of the relevant ratios does not represent the proper construction of the claim.
It must be borne in mind that the Opposed Application is an application for a patent of addition; that is, ‘additional’ to the Additional Parent. Therefore, the claims of the Opposed Application define an invention which (as required) was not disclosed in the Additional Parent, meaning that they necessarily relate to a different invention to the claims in the Additional Parent, and more specifically the claims of the Opposed Application define an invention which is an improvement in, or modification of, the invention defined in the claims of the Additional Parent.
With this in mind, it is clear that the claims of the Opposed Application that refer to claims in the Additional Parent cannot be treated as if they are simply dependent claims contained within the Additional Parent. Instead, they must be treated (and interpreted) as standalone claims in a separate patent application directed to a different invention, albeit an improvement in, or modification of, the main invention claimed in the Additional Parent. This is true regardless whether the claims of the Opposed Application refer to claims in the Additional Parent.” (AS at [6.5.18]-[6.5.20])
“Accordingly, claim 1 of the Opposed Application defines ranges for the ratios of the particular relative bucket proportions (specifically the ratio of the lip width to side wall height and the ratio of the floor length to floor width) that are both higher and lower, but which do not overlap with, the ratios for the same relative proportions defined in claim 1 of the Additional Parent. This, along with the fact that the Opposed Application necessarily relates to an invention that is different to, and a modification/improvement of, the invention in the Additional Parent, not to mention the use of the word ‘further’ in claim 1 of the Opposed Application (which plainly emphasises that the ranges recited in claim 1 of the Opposed Application are beyond or outside those defined in the Additional Parent), - combine to provide a clear indication that claims 1-5 in the Opposed Application should not be interpreted in a way that would cause the scope thereof to cover any excavator bucket that also falls within the scope of claim 1 of the Additional Parent.
The Applicant submits that the correct interpretation of those claims in the Opposed Application which refer to the Additional Parent claims is that these do not include within their scope any excavator bucket that falls within the scope of the Additional Parent claims. Therefore, if an excavator bucket falls within the scope of the Additional Parent claims, this would infringe the Additional Parent (for so long as the Additional Parent remains in force) but it would not infringe a patent granted with claims corresponding to the accepted claims of the Opposed Application.” (AS at [6.5.22]-[6.5.23], original emphasis)
130. I have already found that claim 1 indeed defines continuous ranges for the relevant parameters, these continuous ranges also including the ranges disclosed and claimed in the Additional Parent. The important question I need to answer is whether each continuous range as formed by the defined subranges can be considered as defining “more than one form of an invention” in accordance with subsection 43(3) or not.
131. The Opponent argues that a single continuous range must define a single form of the invention and relies on AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99 (AstraZeneca), at [250]-[251]:
“Section 43(3) of the Act is in similar terms to s 44(2) of the 1952 Act. Section 44(2) of the 1952 Act was introduced by s 8 of the Patents Act 1969 (Cth) which made two amendments to s 44 as it then stood. These amendments were not referred to in the Attorney General’s Second Reading Speech for the Patents Bill 1968 (Cth) (see Hansard, House of Representatives, 16 May 1968 at pp 1540 to 1544). However, the purpose of the relevant amendment as we understand it was to overcome a problem under the 1952 Act which was first identified in the context of the relevant UK legislation in Thornhill’s Application [1962] RPC 199 (‘Thornhill’s Application’) where it was pointed out that the Patents Act 1949 (UK) made no provision for the attribution of different priority dates to different alternatives comprised in a single claim. The relevant claim in that case (reproduced at 202 to 203) had been drafted in a manner that embodied two alternatives only one of which was fairly based on the provisional specification relied upon by the patent applicant to establish the priority date of the claim.
In our view, claim 1 of the 842 or cation patent does not define more than one form of the invention. Unlike the claim in issue in Thornhill’s Application, claim 1 of the 842 or cation patent does not by its terms allow for any alternatives or, adopting the language of s 43(3), different forms of the same invention. Claim 1 defines only one form of the invention even though there will be any number of potential variants that are within its scope. We do not think s 43(3) is intended to treat every potential variant of the defined invention as if it was a form of the invention that must be treated as a separate claim which is to be given its own priority date. Rather, it is intended to deal with very different situations such as that which arose in Thornhill’s Application or where, to take a slightly different example, a claim is dependent on one or more independent claims (claim 3 of the 842 or cation patent takes this form) each of which has a different priority date. We therefore reject AstraZeneca’s submission based upon s 43(3) of the Act.” (original emphasis)
132. Claims 1 and 3 mentioned in the above quotation are reproduced in AstraZeneca at [34]:
“1. A pharmaceutical composition comprising [rosuvastatin] or a pharmaceutically acceptable salt thereof as the active ingredient and an inorganic salt in which the cation is multivalent, provided that:
(i) the inorganic salt is not hydrotalcite or synthetic hydrotalcite; and
(ii) the counter anion to the inorganic salt is not a phosphate.
…
3. A pharmaceutical composition according to claim 1 or claim 2 wherein the cation of the inorganic salt is selected from calcium, magnesium, zinc, aluminium and iron.”
133. The Opponent concludes:
“The Full Federal Court accordingly held that not every potential variant within a claim is to be treated as a different ‘form’ of the invention and able to be separately be [sic] accorded a priority date. Instead, separate ‘forms’ of the invention can be accorded separate priority dates only when the language of the claim itself identifies alternative forms.
This holding by the Full Federal Court was further considered by Yates J in Nichia Corporation v Arrow Electronics Australia Pty Ltd [2015] FCA 699 [Nichia], in which the Judge set out a detailed explanation of Thornhill’s Application.” (OS at [3.3]-[3.4])
134. Indeed, in Nichia, Yates J provided at [58]-[70] detailed discussion of the relevant case law including AstraZeneca and Thornhill’s Application [1962] RPC 199. In addition, I note that the relevant claims under consideration in Nichia are reproduced there at [3]-[4] as follows:
“Claim 1 is:
A light emitting device, including a light emitting component and a phosphor capable of absorbing a part of light emitted by the light emitting component and emitting light of wavelength different from that of the absorbed light; wherein said light emitting component comprises a nitride compound semiconductor and said phosphor contains a garnet fluorescent material including at least one element selected from the group consisting of Y, Lu, Sc, La, Gd and Sm, and at least one element selected from the group consisting of Al, Ga and In, and being activated with cerium.
Claim 3 is:
A light emitting device according to claim 1, wherein the phosphor contains fluorescent material represented by a general formula
(Re1-rSmr)3(All-sGas)5O12:Ce, where 0≤r<1 and 0≤s≤1 and Re is at least one selected from Y and Gd.”
135. With respect to these claims, in the part titled “Consideration”, Yates J stated:
“In AstraZeneca, the Full Court emphasised the terms in which the claim is drafted and directed attention to whether the claim, according to its terms, allows for alternatives.
Claim 1 and claim 3 of the 355 specification are cast in terms that are different to the claim considered in AstraZeneca. Claim 1 includes two discrete and express selection steps—one referable to the selection of the ‘large’ metal ions and the other referable to the selection of the ‘small’ metal ions in the fluorescent material—providing for differently constituted phosphors, depending on the selections made and the combinations arrived at.
Claim 3, although differently drafted, also contains discrete and express selection steps. Similarly to claim 1, there is a stated, but different, selection with respect to the ‘large’ metal ions in the fluorescent material. The constituents of this material are also determined by the selection of a value for r from the given range. The general formula in claim 3 also provides for a selection in relation to the ‘small’ metal ions of the fluorescent material by providing a range of values for s. These various selection steps combine to provide differently constituted phosphors.
I am satisfied that, by their terms, each of claims 1 and 3 of the 355 specification envisage and provide for different forms of the invention, as understood by s 43(3) of the Act. In each case, these forms are represented by the individual phosphors obtained after the selection steps have been undertaken.” (at [84]-[87], emphasis in bold added)
136. I find a great deal of similarity between the ranges of claim 3 above and the ranges of, e.g., claim 1 of the Application. Yates J placed considerable emphasis on the selections from the ranges as part of the “various selection steps [that] combine to provide differently constituted phosphors”. Following the same line of reasoning, I conclude that the steps of selecting the ratios from the respective ranges as defined in claim 1 will provide differently constructed excavator buckets, which I consider different forms of the invention within the meaning of subsection 43(3). Each of these different forms can have a different priority date.
137. Returning to the fact that the Additional Parent is also the divisional grandparent of the Application, it follows that all forms of the claimed invention that are disclosed in the Additional Parent will have the same priority date as the Additional Parent, hence this disclosure in the Additional Parent cannot be novelty destroying. In addition, all other forms of the claimed invention are not disclosed in the Additional Parent, hence their later priority date is irrelevant in this context. I conclude that the Additional Parent cannot deprive claim 1 of novelty.
138. So far, my discussion was focussed on claim 1, however the same line of thinking would equally apply to any one of the claims which, similar to claim 1, incorporates forms of the claimed invention that are disclosed in the Additional Parent. I do not need to discuss these claims separately as I consider that the Additional Parent cannot deprive any one of these claims of novelty for the same reasons as discussed above with respect to claim 1.
139. In the above, I proceeded on the assumption that all forms of the claimed invention that are disclosed in the Additional Parent are entitled to the same priority date as the Additional Parent. However, I must note that the Application is not a direct divisional child of the Additional Parent, hence this assumption will only be valid if the disclosure in the Additional Parent is also found in the Divisional Parent which is the divisional child of the Additional Parent. As I already mentioned, the Divisional Parent is, strictly speaking, not in evidence. In addition, there is no evidence or even submissions questioning the divisional status of the Application and/or of the Divisional Parent. Indeed, the Opponent’s submissions with respect to non-compliance with subsection 64(2) somewhat suggest that the Opponent considers that the forms of the invention disclosed in the Additional Parent are entitled to have the priority date of the Additional Parent (see OS at [5.9] and [1.2.4]). Therefore, based on the material before me, I have no reasons to consider that any one of the forms of the claimed invention that are disclosed in the Additional Parent is not entitled to the same priority date as the Additional Parent.
Prior use
140. This ground of opposition is particularised in the SGP at [6.1]:
“The opponent intends to lead evidence to show that the applicant manufactured or had manufactured buckets which fall within the scope of the claims of the opposed application before the priority date of the ‘additional’ matter.”
141. No such evidence was provided by the Opponent, hence prior use by the Applicant (or facilitated by the Applicant) cannot be established.
Novelty summary
142. I have not established that any of the documents or acts relied on by the Opponent discloses all essential features of any one of the claims. Therefore, I am not satisfied that any one of the claims is not novel.
143. In light of this finding, I do not need to decide on whether or not the disclosure of the prior art patent documents relied on by the Opponent includes information obtainable by scaling and taking measurements from the drawings reproduced in these documents. Nonetheless, I have briefly reviewed the parties’ submissions on the matter, i.e. the Opponent’s Submissions on Drawings and the Applicant’s Submissions on Drawings. I must note that the Applicant’s submissions appear more focused on the issue and more persuasive.
Inventive Step under Subparagraph 18(1)(b)(ii)
144. Subsection 7(2) stipulates:
“For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed (whether in or out of the patent area) before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).” (emphasis added)
145. In the SGP, the Opponent stated at [5.1]:
“The opponent intends to lead evidence of common general knowledge which will include sworn statements by persons associated with the opponent and documents including those listed above.”
146. In the above statement, the Opponent apparently accepts the fact that the common general knowledge must be established by evidence, however despite this, the Opponent has not provided any evidence with respect to the common general knowledge. In view of the statutory requirements imposed by subsection 7(2), I cannot be satisfied that any one of the claims does not involve an inventive step.
147. I note the Opponent’s view that:
“The patent applicant effectively admits that the opposed specification claims matter which is a ‘mere workshop improvement’ over the disclosure in, for example, document D13 and describing a process of trial and error by which the present invention was arrived at from the starting point of D13.” (OS at [7.4])
148. However, I also note that the specification mentions that “many, many patents [were] granted for [presumably inventive] improvements in excavator buckets over the last century or so” (page 3, lines 13-14) and discusses in some detail a number of such patents. It also explains that “[c]areful practical and finite element analyses of contemporary bucket designs suggested that there may be a relationship between the length and width of the bucket floor as well as the width and height of the bucket mouth as exhibited in the comparison between a conventional heavy duty bucket and the light-weight bucket disclosed in United States Patent 6,834,449 to the same assignee” (page 14, lines 13-18). In the absence of any evidence, the alleged admission by the Applicant is not apparent to me.
Conclusion and Costs
149. In deciding this opposition, I considered all valid grounds of opposition raised by the Opponent and I did not find that the Opponent is successful on any of these grounds. It follows that the opposition is unsuccessful on all grounds.
150. It is a normal practice that costs should follow the event. I note that the Application was not amended during the opposition period. I have no reasons to depart from the normal practice, and since the opposition is unsuccessful, I will award costs against the Opponent.
151. In addition, the Applicant submits:
“In awarding costs in the Applicant’s favour, the Applicant also requests a variation of scale beyond the normal award of costs based on:
a) The large number of prior art documents identified and asserted as relevant by the Opponent, but which the Opponent has not subsequently relied upon or withdrawn (despite having ample opportunity to do so, including when providing further and better particulars on two separate occasions), and which the Applicant has consequently been put to the task of reviewing and analysing. Also given the Opponent’s failure to ever provide adequate particulars to explain the relevance of any of these prior art documents.” (AS at [14.3])
152. The Opponent did not provide any written submissions on costs, however during the hearing, they submitted that serious unforeseen personal matters affected the ability of the Opponent’s representative to perform their duties as intended, hence there should be no variation of costs. I note that the hearing date of 20 November 2017 was set in a way as essentially suggested by the Opponent so as to accommodate the effect of these matters. The Opponent did not request further deferral of the hearing date. Although the serious unforeseen matters might well have been beyond the control of the Opponent’s chosen representative, the question I need to answer is whether the Opponent’s actions or inaction nonetheless resulted in higher costs to the Applicant.
153. Indeed, as noted earlier in this decision, the SGP is not perfectly clear at least with respect to the exact identification of the grounds on which the Application is opposed. Further, the SGP as originally filed was accompanied by 39 prior art patent documents and their relevance for novelty and/or inventive step was not particularised at all (except for document D13 for which some comments were provided at [4.3]). It took two requests for further and better particulars to reach some level of particularisation, however the provided explanations about the disclosure of the documents could have been much more specific. The evidence in support also failed to provide any further detail as to the relevance of any one of these 39 documents.
154. In addition, the Opponent’s Summary was filed six business days before the hearing (instead of ten business days as required by the Regulations) and was rather inconclusive, e.g. stating as quoted earlier in this decision that “[t]he Opponent will be relying primarily on the following documents (which were particularized in the Statement of Grounds and Particulars) to establish ‘lack of novelty’ and ‘lack of inventive step’” (OS at [7.1], emphasis added).
155. The general failure of the Opponent to define the boundaries of their case with sufficient level of clarity and detail was already noted earlier in this decision. This, combined with the late filing of the Opponent’s Summary essentially forced the Applicant to prepare their case on the basis of all possibly implied grounds of opposition (e.g. including utility and secret use, see AS sections 10 and 11) and all filed prior art documents (see Appendix 1 to AS). Although the Applicant’s Summary was also late (filed three business days before the hearing instead of the five business days required by the Regulations), this was still three business days after the Opponent’s Summary instead of the usual five business days available to an applicant when an opponent complies with the Regulations. I conclude that regardless of the reasons, the Opponent’s behaviour has resulted in increased costs to the Applicant, in particular with respect to the preparation of their case for the hearing. Therefore, I consider that a variation of costs according to Schedule 8 is warranted.
156. In determining the magnitude of variation, I need to take into account that out of the 40 documents filed in evidence (39 prior art patent documents and Simpson with exhibit MS-1) the Opponent’s Summary specifically lists only three (see OS at [7.1] as reproduced earlier in this decision) and even then, this was done without sufficient explanations of their relevance. It appears that the Opponent was mostly relying on the rebuttal of the Applicant’s arguments (e.g. via the Out of Time Submissions filed at the beginning of the hearing, and the new evidence filed after the hearing) instead of positively discharging their onus of establishing the grounds of opposition. Given the significant burden placed on the Applicant in preparing a much broader case for the hearing than ultimately necessary, I consider it fair to award costs for item 11 – “Preparation of case for hearing” of Part 1 – “Costs” to the amount equal to 5 (five) times the amount listed in Schedule 8. I do not find sufficiently compelling reasons to vary any other amount in Schedule 8.
Dr V. Z. Kolev
Delegate of the Commissioner of Patents
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