Talon Engineering SDN. BHD. v Esco Group LLC - [2018] APO 79

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Talon Engineering SDN. BHD. v Esco Group LLC [2018] APO 79

Patent Application: 2013200107

Title:Wear assembly

Patent Applicant:                   Esco Group LLC
Opponent:  Talon Engineering SDN. BHD.
Delegate:  R Subbarayan
Decision Date:  30 October 2018
Hearing Date:  8 August 2018, in Melbourne

Catchwords:  PATENTS – opposition to grant of patent – lock for wear member of excavating equipment – whether the claims are novel – whether claims are inventive – whether specification provides a full description – none of the grounds made out – costs awarded against the opponent

Representation: Counsel for the applicant: Tom Cordiner SC
Patent attorney for the applicant: Minter Ellision
Patent attorney for the opponent: Barry Newman of Armour IP

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2013200107

Title:Wear assembly

Patent Applicant: Esco Group LLC
Date of Decision: 30 October 2018
DECISION
The opposition does not succeed. The claimed invention is novel, inventive and fully described.
Subject to any appeal, the application is to proceed to grant.
Costs according to schedule 8 are awarded against the opponent.
REASONS FOR DECISION
BACKGROUND

Patent application 2013200107 in the name of Esco Group LLC (the applicant) was filed on 9 January 2013 as a divisional application of AU2011201135. It claims an earliest priority date of 30 March 2006 through a string of parent applications. Following examination, it was advertised as accepted on 21 July 2016. It was opposed under s59 of the Patents Act by three parties, namely Talon Engineering SDN. BHD (the opponent), CQMS Pty Ltd and Caterpillar Inc. CQMS Pty Ltd and Caterpillar Inc. subsequently withdrew their respective oppositions and therefore the only opponent left is Talon. The matter was heard on 8 August 2018.
Parent application 2011201135 was the subject of Federal Court proceedings VID 83 of 2015 (Ronneby Road Pty Ltd v ESCO Corporation [2016] FCA 588 and ESCO Corporation v Ronneby Road Pty Ltd [2018] FCAFC 46) and both parties relied on some of the evidence filed and the Courts’ findings in these proceedings.
GROUNDS OF OPPOSITION
The Statement of Grounds and Particulars filed on 20 January 2017 indicates that the grounds under which the application is being opposed includes lack of novelty, lack of inventive step, lack of full description, lack of clarity and lack of fair basis. All of these grounds apart from lack of clarity were pressed at the hearing.
EVIDENCE
Evidence in support from the opponent comprises the following:
·Declaration of Barry Newman dated 18 April 2017 with exhibits BSN-1 to BSN-5 (Newman).
·First Declaration of Neil Dennis dated 18 April 2017 with exhibits ND-1 to ND-7 (Dennis #1).
Evidence in answer from the applicant comprises the following:
·First Declaration of Terry Lee Briscoe dated 21 July 2017 with exhibits TLB-1 to TLB-3 (Briscoe #1);
·Declaration of Douglas Gordon Fisher dated 23 July 2017 with exhibit DGF-1 (Fisher);
·Declaration of Rebecca Dutkowski dated 24 July 2017 with exhibits RD-1 to RD-5 (Dutkowski);
Evidence in reply from the opponent comprises the following:
·Second Declaration of Neil Dennis dated 20 September 2017 with exhibits ND-8 to ND-9 (Dennis #2);
The applicant also filed on 6 December 2017 the following document which is stated to clarify Mr Briscoe’s statements in his earlier declaration regarding an “interference fit” between the lock and the base, along with a request that the Commissioner should bring this into the proceedings under the provisions of regulation 5.23:
·Second Declaration of Terry Lee Briscoe dated 5 December 2017 (Briscoe #2)
I agree that it does clarify what Mr Briscoe meant by “interference fit” in his earlier declaration and in that respect is relevant to the present proceedings. Talon addressed this declaration in their submissions and did not make express any serious concerns in bringing this into the proceedings. I have therefore decided to bring Briscoe #2 into the proceedings under the provisions of regulation 5.23.
Mr Dennis is currently the General Manager of Talon. He states that he is a Mechanical Engineer who has worked in the field of ground engaging tools (GET) since 2004. From 2004 to 2012 he was employed by Shark Abrasion Systems Pty Ltd, a company that specialises in the design and manufacture of GETs. He provides evidence on different types of GET locking systems including the Torq Lok locking system made by Quality Steel Foundries and also comments on the present invention.
Mr Newman is the attorney for Talon and has provided copies of the documents that are relied on by Talon including copies of the written evidence filed in respect of the Federal Court proceedings of the parent application as well as copies of court transcripts from these proceedings.
Mr Briscoe is a retired Mechanical Engineer who worked for ESCO from 1970 to 2013 in various engineering and product development roles. In his evidence he provides his opinion on various hammerless GET locking systems including Torq Lok, the present invention and the evidence of Mr Dennis.
Mr Fisher is an employee of ESCO from 2010 and is currently responsible for the roll out of new products in the Australasian region. He was previously employed for over 40 years with Bradken Limited, an Australian company that manufactured GET products under licence from ESCO. In his evidence he provides his opinion on various prior locking systems that were known in the GET industry in Australia.
Ms Dutkowski is a Solicitor with Minter Ellision and has provided copies of documents mentioned in Mr Briscoe’s declaration.
In addition, the opponent also referred to evidence from Mr Benjamin David Hughes and Mr Desmond Erickson from the Federal Court proceedings (exhibit BSN-4 of Newman). I will refer to the evidence where appropriate.
APPLICABLE LAW
As a consequence of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012, there are substantial changes to the Patents Act 1990. The date of effect of those changes was 15 April 2013. The application of the Raising the Bar Act in the present case depends on the date of the request for examination. The applicant filed its request for examination on 6 March 2013. Consequently the Patents Act as in force immediately before 15 April 2013 applies in the present case.
This means the former standard for opposition proceedings applies and the opponent bears the onus of establishing that it is clear or practically certain that a valid patent could not be granted (F Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283; 50 IPR 305 at 311, 319; Commissioner of Patents v Sherman [2008] FCAFC 182; 79 IPR 426; Genetics Institute Inc v Kirin-Amgen Inc [1999] FCA 742; [1999] 92 FCR 106 at [17]).
Section 18 of the Patents Act 1990 relates to patentable inventions. Relevant parts of subsection (1) appear below.
(1) Subject to subsection (2), an invention is a patentable invention for the purposes of a standard patent if the invention, so far as claimed in any claim:
(a)is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies; and
(b)when compared with the prior art base as it existed before the priority date of that claim:
a.(i) is novel; and
b.(ii) involves an inventive step; and
(c)is useful; and .........
Subsections 40(2)(a), (b) and (3) at the relevant time were as follows.
(2) A complete specification must:
·(a) describe the invention fully, including the best method known to the applicant of performing the invention; and
·(b) where it relates to an application for a standard patent - end with a claim or claims defining the invention; and ...
(3) The claim or claims must be clear and succinct and fairly based on the matter described in the specification.
SPECIFICATION
The specification states that the invention relates to wear members that are commonly attached to excavating equipment, such as excavating buckets, to protect the equipment from wear and to enhance the digging operation. Such wear members are typically elongate with an excavating tooth or point at a front end and a socket at a rear end. The socket is fitted over a base or nose on the excavating bucket and releasably secured thereto with a lock that is inserted into aligned apertures in the wear member and base. The wear members are subject to very harsh conditions in use and consequently wear out and need to be replaced at regular intervals.
The specification describes a number of aspects of a wear member including (a) the provision of various stabilizing surfaces in the wear member to resist the different loads that it is subjected to in use, (b) the shape of the wear member and (c) the structure and arrangement of the lock. However the claims of this divisional application are solely directed to the structure and arrangement of the lock within a through-hole in the wear member to form a wear assembly.
Figures 23, 25, 31 and 32 that are reproduced below assist in understanding the claimed invention.
Wear member 12 is adapted to fit over nose 14 of a base 15 on the bucket of excavating equipment and secured thereto with a lock that is fitted within a through-hole 81 in the wear member 12. The lock comprises a body 110, a resilient member 112 and a shield 114 that are all bonded together. Through-hole 81 has a generally rectangular shape with end walls 85, 87, front wall 89 and rear wall 91. The lock includes a narrow end 103, a wide end 105, a front face 107 and a rear face 109. Narrow end 103 is formed as a pivot member 113 that cooperates with bulb 93 on end wall 85 of the through-hole to enable the lock to pivotally swing about bulb 93 between hold and release positions. In the hold position the lock protrudes into the socket and into an aligned cavity 83 in the base 14 to secure the wear member to the base. In the release position, it still remains secured to the wear member but does not protrude into the socket thereby permitting the wear member to be removed from or fitted over the base. Latch formations provided in the lock and the wear member and the compressibility of the resilient member ensure that the lock is securely held in the wear member in both the hold and release positions. In one embodiment latch formation 115 on the body engages stop 95 in an end wall of the through-hole to secure the lock in the release position. The lock is able to be moved between hold and release positions “without a hammer for ease of use and enhanced safety”[1] and in a preferred arrangement this is done using a prying tool T as can be seen in figures 23 and 25 that show the locking member 17 in the release and hold positions respectively.
[1] Specification at paragraph [18]
While in a typical wear assembly, the lock is a separate member that is inserted into the aligned openings in the wear member and base during installation of the wear member, the present invention is characterised by the fact that the lock is installed in the through-hole of the wear member and secured thereto in a so-called release position to form an assembled wear assembly which can then be shipped to customers in this assembled state. This is stated to provide benefits such as “less shipping costs, reduced storage needs, and less inventory concerns”[2] and also reduced “risk of dropping or losing the lock during installation”[3]. While the lock normally remains integrally secured within the through-hole in the wear member, the specification also states that if required the lock can be completely removed for shipping, replacement or installation.
[2] Specification at paragraph [15]
[3] Specification at paragraph [16]
The specification ends with 26 claims of which the independent claims 1, 4, 12, 13 and 17 are as follows:
1.A wear assembly for attachment to excavating equipment comprising:
a wear member including an exterior surface, a front end, a rear end, a cavity open in the rear end to receive a base secured to the excavating equipment, and a through-hole defined at least in part by front and rear walls extending between the exterior surface and the cavity; and
a lock maintained within the through hole between the front and rear walls, and adjustably movable in the through-hole without threads to (i) contact the base received in the cavity and prevent removal of the wear member from the base and (ii) clear the base to permit axial movement of the wear member relative to the base for installing the wear member on the base, the lock being secured to the wear member and retained in the through-hole when the wear member is adjusted to clear the base regardless of whether the base is in the cavity or the orientation of the wear member.
4. A wear assembly for excavating equipment comprising:
a wear member including an exterior surface, a front end, a rear end including a cavity having opposing upper and lower walls and a front wall extending between the upper and lower walls, the cavity opening rearward to receive a base of the excavating equipment between the upper and lower walls for supporting the wear member on the excavating equipment, and a through-hole extending from the exterior surface to the cavity; and
a lock including a body and a resilient member secured together for installation as a unit into the through-hole of the wear member, the lock being adjustable (i) contact the base received in the cavity and prevent removal of the wear member from the base and (ii) clear the base to permit axial movement of the wear member relative to the base for installing the wear member on the base, the resilient member resisting adjustment of the lock, and the lock being secured to the wear member and retained in the through-hole when the wear member is adjusted to clear the base regardless of whether the base is in the cavity or the orientation of the wear member.
12. A wear assembly for attachment to excavating equipment comprising:
a wear member including an exterior surface, a front end, a rear end, a cavity open in the rear end to receive a base secured to the excavating equipment, and a through-hole extending between the exterior surface and the cavity, the cavity including a front wall opposite the open rear end, an upper wall and a lower wall, the upper and lower walls (a) extending rearward between the front wall and the open rear end of the cavity, (b) being spaced to receive the base therebetween when the wear member is mounted on the excavating equipment and (c) resisting upward and downward loads applied to the wear member during operation of the excavating equipment;
a body and a resilient member secured together as a unit for installation in the throughhole,
the body and resilient member being maintained in the through-hole and adjustable without threads and without a hammer such that the body can be moved to contact the base received in the cavity and prevent removal of the wear member from the base, and moved to clear the base to install the wear member on the base and remove the wear member from the base, the resilient member interacting with the body to resist the adjustment of the body between contacting the base and clearing the base, and the body and the resilient member being secured to the wear member and retained in the through-hole when the body is adjusted to clear the base and when adjusted to contact the base regardless of whether the base is in the cavity or the orientation of the wear member.
13. A wear assembly for excavating equipment comprising:
a wear member including an exterior surface, a front end, a rear end including a cavity having opposing upper and lower walls and a front wall extending between the upper and lower walls, the cavity opening rearward to receive a base of the excavating equipment between the upper and lower walls for supporting the wear member on the excavating equipment, and a through-hole extending from the exterior surface to the cavity; and
a body and a resilient member coupled together and in the through-hole;
the body being adjustable to (i) contact the base received in the cavity and prevent removal of the wear member from the base and (ii) release the base to permit the wear member to be installed on and removed from the base, the adjustment of the body being free of threads; and
the body and the resilient member being retained with the wear member regardless of the receipt of the base in the cavity or the orientation of the wear member when the body is adjusted to clear the base.
17. A wear assembly for attachment to excavating equipment comprising:
a wear member including an exterior surface, a front end, a rear end including a cavity having opposing upper and lower walls and a front wall extending between the upper and lower walls, the cavity opening rearward to receive a base of the excavating equipment between the upper and lower walls for supporting the wear member on the excavating equipment, and a through-hole extending from the exterior surface to the cavity; and
a body and a resilient member coupled together and in the through-hole;
the body being adjustable between a discrete hold position where the body contacts the base received in the cavity and prevents removal of the wear member from the base and a discrete release position where the body releases the base to permit the wear member to be installed on and removed from the base,
the body and the resilient member being retained with the wear member in each of the hold and release positions regardless of the receipt of the base in the cavity or the orientation of the wear member.
CLAIM CONSTRUCTION
The approach to the construction of claims was summarised 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”
The only constructional issue that was raised by the opponent relates to independent claim 4 that defines “a body and a resilient member secured together for installation as a unit into the through-hole of the wear member”.
They submitted that there is nothing in the specification to suggest to a skilled addressee that this definition should be read as requiring assembly of the body and resilient member in a particular order and it should be merely construed as being secured together as a unit when installed. More specifically they argued that the specification reinforces that the advantages of the wear assembly are gained in its assembled condition and that the order of steps taken to assemble the wear assembly is irrelevant.
I beg to differ. The plain meaning of “a body and a resilient member secured together for installation as a unit” is that the body and resilient member are secured to each other so that they can then be installed as a single unit into the through-hole. Such a construction is also fully consistent with the disclosure in the specification. For example the specification describes at [79] that the “lock is composed of a body 110, a resilient member 112 and a shield 114 all bonded or otherwise secured together" and at [83]) that the lock is "installed into wear member 12 (in the release position) at the time of manufacture and shipped to a customer". These three parts of the lock can be seen in figure 19 that is reproduced below:
I fail to see how the body, resilient member and shield can be bonded together after being installed in the through hole. Also if these three parts are simply placed together in the through hole without some form of securement to each other, the lock would not work as each of these parts could move independently when the lock is attempted to be pivotally moved by the tool. Furthermore, as noted by the applicant, the disclosure at [83] that the lock “could be completely removed from wear member 12 if desired for shipping, storage, replacement, installation and/or removal” again indicates that the components of the lock remain secured together even after removal.

In my view this definition clearly requires that the body and resilient member are secured together prior to installation into the through hole.
NOVELTY
A claimed invention is deprived of novelty if it has been given to the public before the priority date, either by prior use of a product or process, or by publication of information that equates to the claimed invention (Novozymes A/S v Danisco A/S [2013] FCAFC 6; 99 IPR 417 at [147]). It is well settled that the general test for anticipation or want of novelty is the reverse infringement test (Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19; 137 CLR 228 at [19]), and 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; 16 IPR 545 at [19]).
To meet this requirement, the prior art must contain “clear and unmistakable directions” to produce the invention as claimed (Pfizer Overseas Pharmaceuticals v Eli Lilley and Company [2005] FCAFC 224; 68 IPR 1 at [314]). However, if the prior publication contains a direction which is capable of being carried out in a manner which would infringe the claimed invention, but would at least as likely be carried out in such a way that would not do so, the invention as claimed will not be anticipated (General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [1972] RPC 457 at 485-486; 1A IPR 121 at 138, Novozymes A/S v Danisco A/S [2013] FCAFC 6; 99 IPR 417 at [177]).
In AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99, the full Federal Court held:
"Sufficiency of disclosure is a cardinal anterior requirement in the analysis of whether a prior art document anticipates a claimed invention. It is only after the stage of assessing the sufficiency of disclosure which involves a determination about whether a prior document has ‘planted the flag’ as opposed to having provided merely ‘a signpost, however clear, upon the road’ or, perhaps, something less that the notion of reverse infringement comes into play as the final and resolving step of the required analysis. It is not the first step of the required analysis; nor is it the only step".
Torq Lok
The primary prior art information relied on by the opponent for both novelty and inventive step is the Torq Lok wear member locking system.
The Torq Lok is a locking pin for securing a wear attachment to an adaptor (base) on an excavator bucket without the use of a hammer. It was developed and manufactured by a company called Quality Steel Foundries Ltd (Quality Steel) in Canada from at least the year 2000. The features of Torq Lok were comprehensively discussed in the Federal Court Proceedings based on the evidence of Mr Benjamin David Hughes, the R&D Manager for Talon, who observed samples of the Torq Lok product during a visit to Quality Steel in 2003 and Mr Desmond Erickson a Metallurgical Engineer who worked for Quality Steel[4].
[4] Exhibit BSN-4 of Newman
The following three drawings made by Mr Hughes show a wear member with a Torq Lok locking pin in three configurations, namely (i) when not installed to the base, (ii) when installed over the base but still not secured to the base by the locking pin and (iii) when secured to the base with the locking pin.
(i)

(ii)
(iii)
Talon provided in their written submissions the following reproduction (iv) of the second drawing with some added reference letters to show the different features of Torq Lok.
(iv)
This drawing shows a wear member B including an exterior surface C, a front end D, a rear end E including a cavity F having opposing upper G and lower H walls and a front wall I extending between the upper and lower walls, the cavity opening rearward to receive a base J of the excavating equipment between the upper and lower walls for supporting the wear member on the excavating equipment, and a through hole K extending from the exterior surface to the cavity; and a Torq Lok L retained in the through hole in a position in which the wear member can be installed over the base J.
The Torq Lok L comprises a locking pin M that is threadably mated with a polymer retainer N. The installation of Torq Lok in the wear member involves first interference fitting the polymer retainer N in the through-hole from within the cavity of the wear member and then inserting the locking pin M into the through-hole from the outside by screwing it into the polymer retainer till the bottom of the pin is flush with the bottom of the retainer. To assist with ensuring that the pin was flush with the bottom of the retainer, a gauge would be placed in contact with the retainer and the pin was then screwed in until it touched the gauge. The wear members were normally shipped with the Torq Lok secured in this position so that the wear member could be attached to the base by merely sliding the wear member over the base and then screwing the locking pin further so that the bottom of the locking pin extends into an aligned opening in the base to secure the wear member to the base as seen in drawing (iii).
Discussion
The opponent’s attack on novelty is limited to independent claim 4 and some of its subsidiary claims. They submitted that claim 4 is not novel in light of Torq Lok when fitted to the through hole in a wear member and the way it operates to secure the wear member to a base.
From my earlier discussion of Torq Lok, it is clear that it has a wear member including a front end, a rear end, a cavity at the rear end, a through hole, a lock including a body (locking pin) and a resilient member (the polymer retainer) that are installed in the through hole, with the locking pin being adjustable to (i) extend into the cavity to contact the base and (ii) clear the base to permit axial movement of the wear member relative to the base. It is also clear from the evidence of Mr Hughes and Mr Erickson that the Torq Lok is normally retained in the through hole of the wear member regardless of whether the wear member is fitted over the base. There is also nothing to suggest that this retention is in any way dependent on the orientation of the wear member.
Claim 4 however requires that the body and resilient member be secured together as a unit before installation whereas in Torq Lok the securing occurs within the through hole. While Talon submitted that claim 4 only requires that the body and resilient member should be secured together as a unit, I have already rejected this construction. Claim 4 is therefore novel.
Talon also ran the argument that alternatively if this definition requires that the securement happens prior to installation, then this feature is a non-essential feature as it has no material effect upon the way the invention works.
Again I can see no merit in this submission. It is clear from my earlier discussions of the construction of the lock and how it functions within the through hole that all the components of the lock need to be secured together as a unit prior to installation in the through hole in order to function properly. Clearly Talon is attempting to construe the claim with a view to anticipation rather than construe it in light of the disclosure of the specification. This feature is clearly a limiting essential feature of the claim that is not disclosed by Torq Lok. This attack on claim 4 also fails.
I find that claim 4 and its dependent claims are novel over Torq Lok.
INVENTIVE STEP
The statutory basis for inventive step is set out at s7(2) and s7(3) of the Act, and is reproduced below:
“(2) 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 in 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).
(3) The information for the purposes of subsection (2) is:
(a) any single piece of prior art information; or

(b) a combination of any 2 or more pieces of prior art information;
being information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded as relevant and, in the case of information mentioned in paragraph (b), combined as mentioned in that paragraph.”
The Dictionary of the Act defines the prior art information for the purposes of subsection 7(3) to comprise
(i)information in a document that is publicly available, whether in or out of the patent area; and
(ii)information made publicly available through doing an act, whether in or out of the patent area.
The test for whether an invention is obvious is whether it would have been a matter of routine to proceed to the claimed invention. In Wellcome Foundation Ltd v VR Laboratories (Aust.) Pty Ltd, [1981] HCA 12, 148 CLR 262 at 286 [45], Aickin J stated:
"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."
In AstraZeneca AB v Apotex Pty Ltd, [2014] FCAFC 99, the court held at [203] that in formulating the problem it is not permissible to incorporate information that is not available to the person skilled in the art (PSA) either as common general knowledge (CGK) or information available under subsection 7(3).
Where the invention lies in a combination of integers, the question is not whether each individual integer was obvious but rather whether the combination as a whole was obvious when compared to the prior art base. In Aktiebolaget Hässle v Alphapharm Pty Limited [2002] HCA 59 the High Court stated at [41]:
“The claim is for a combination, the interaction between the integers of which is the essential requirement for the presence of an inventive step. It is the selection of the integers out of ‘perhaps many possibilities’ which must be shown to be obvious, bearing in mind that the selection of the integers in which the invention lies can be expected to be a process necessarily involving rejection of other possible integers.”
Common General Knowledge (CGK)
While there was some difference of opinion between the experts for the opponent and the applicant with regard to the CGK in relation to locking systems in Australia at the priority date, it is common ground that certain locking systems were well known in Australia at the priority date.
Both hammered and hammerless locking systems were in use in Australia before the priority date. However due to safety concerns with hammered systems there was a push to move away from hammered systems and in fact hammered systems are not currently permitted on mining sites in Australia.
Various hammerless systems had been developed by different manufacturers and these could be broadly grouped as “Wedge and Spool” systems which use a screw thread to drive a wedged pin into a locked position and “Click-into-place”/ “Pry-in, pry-out” systems that used a lock with a resilient component that could be squeezed into a locked position using a tool. There was however debate over which specific prior art locking systems in each of these groups had become part of the CGK before the priority date. However nothing appears to rest on this and hence I do not need to resolve this.
The opponent accepted that Torq Lok was not part of the CGK at the priority date.
Torq Lok as section 7(3) information
While the Federal Court found that prior use of the Torq Lok had been established by the display of Torq Lok at Quality Steel, that was in respect of novelty. As the opponent relies on Torq Lok to establish that the claimed invention is lacking an inventive step, I need to be satisfied that the Torq Lok product is prior art information under section 7(3) for assessing inventive step, i.e. it is a product that the person skilled in the art in Australia could be reasonably be expected to have ascertained, understood and regarded as relevant.
While the section 7(3) ascertainment of published documents can generally be established through publication information of the document and what kinds of sources that a person skilled in the art in Australia would normally consult when trying to develop a new product, the ascertainment of a product that is allegedly available in the market for purchase is more problematic. There appears to be very little authority on this. However in my view the general principles are the same in that it needs to be clearly established through evidence that (a) the product was indeed available to a member of the public without any fetter of confidentiality, (b) the person skilled in the art could be reasonably be expected to have found this product when trying to develop a new product in the field of locking systems for GETs. Evidence in relation to Torq Lok is provided by Messrs Erickson, Dennis, Hughes, Fisher and Briscoe.
The opponent submitted that Messrs Erickson, Dennis, Hughes and Briscoe have declared familiarity with the Torq Lok product prior to 30 March 2006 clearly indicating that it was widely known in the industry. Furthermore it was widely available in Canada before this date and it is therefore reasonable to expect that a diligent searcher would have ascertained Torq Lok.
Mr Erickson has stated that Quality Steel sold approximately 600 Torq Lok per month to customers for the purpose of connecting wear components such as teeth and shrouds, which I presume has been happening since at least the year 2000. One of the main features that was used to promote the product was that it was quick, easy and safe to install and the installation could be done by a single person. A video of the use of Torq Lok was also made around 2002 and distributed at the Trade Show where Torq Lok was launched. No copies of the brochure or video were however provided by Mr Erickson.
Mr Dennis states he saw the Torq Lok during a visit to Quality Steel in late 2004 or early 2005, but does not explicitly state that this product was sold or known in Australia before the priority date. While he generally states that large mining industries in Canada, USA and Australia used the same machines and techniques and that any GET locking product used in significant quantities in any one of these countries would be known within the mining industries of all these three countries, it would appear from his evidence that he became aware of Torq Lok only as a result of a visit to Quality Steel.
Mr Hughes has stated in his evidence that he became aware of Torq Lok as a result of a visit to Quality Steel in September 2003.
Mr Briscoe states that while he became aware of the Adamic patent (exhibit BSN-3) in 2005, he became aware of the Torq Lok product (the commercial product of the Adamic patent) only in 2006 when he saw it in operation in a coal mine in Canada.
Mr Fisher states that he had not heard of Torq Lok and that he does not consider that “this product would have been widely known, if at all, by people in the GET industry in Australia before 30 March 2005”[5].
[5] Fisher at 4.1
While Mr Erickson has stated around 600 Torq Lok units were sold per month, he has not stated how many customers there were, who these customers were and whether any of them were in Australia. As noted by the applicant 600 units in the context of excavator teeth and shrouds is not a large number as a single drag link can use as many and that the number of customers could very well be just one or two. Similarly while Mr Erickson has mentioned the launch of Torq Lok in a Trade Show around 2002 and promotional materials such as brochures and a video, there is no further information on this Trade Show or how widely the promotional materials were circulated.
In my view, it is clear from the evidence of Mr Dennis and Mr Hughes that they became aware of the Torq Lok product only when they happened to visit Quality Steel as part of their commercial dealings with Quality Steel and not as a result of any general awareness of this product within the industry. Mr Briscoe and Mr Fisher who have been involved in the field of GETs for over three decades have stated that they were not aware of Torq Lok before the priority date. There is also no evidence to suggest that the PSA in Australia could reasonably have been expected to contact Quality Steel to enquire about their GET locking products when trying to develop a new locking system before the priority date.
Based on the evidence, I am not satisfied that the PSA in Australia could be reasonably be expected to have ascertained the Torq Lok product before the priority date. Torq Lok is therefore not prior art information for assessing inventive step. The opponent’s case on obviousness based on Torq Lok therefore fails.
The applicant also provided submissions as to why the claimed invention is not obvious even if Torq Lok was prior art information. For the sake of completeness, I will also therefore discuss whether the opponent’s attack on obviousness would succeed if Torq Lok was prior art information under section 7(3).
The opponent submitted that it was CGK to attach wear members to excavating equipment by inserting some sort of non-threaded lock in aligned apertures in the wear member and the base as exemplified in locking system such as ESCO Toplock (US 5088214) and Blue Pointer (AU 2001277401). While the claimed invention moves beyond this CGK in that the lock is secured to the wear member and retained in the through-hole regardless of whether the base of the excavating equipment is within the cavity of the wear member or the orientation of the wear member, these features are characteristic of the Torq Lok. The skilled addressee trying to solve the problem of the propensity for locks to get separated from wear members would therefore be directly led to try securing the CGK non-threaded locks within the through-hole in the expectation that it might well produce a useful alternative.
As discussed earlier, the Torq Lok is a threaded system comprising a threaded locking pin and a polymer retainer, with the polymer retainer being inserted first within the through-hole from within the cavity in the wear member and the locking pin being subsequently threaded into the polymer retainer from the outside of the wear member. It is the threaded engagement of the pin in the retainer that secures the pin within the through-hole of the wear member. The CGK locking systems on the other hand are non-threaded locking systems that work in an entirely different manner. I can find no reasoned statements in the evidence of Mr Dennis to satisfy me that a skilled addressee would have, as a matter of routine, modified the non-threaded prior art locking systems to ensure that the locking member remains secured within the through-hole when the base in not received within the cavity. This line of attack on obviousness fails.
The opponent also submitted in the alternative, that the problem to be solved can be formulated as the use of threads in Torq Lok is undesirable and faced with this problem it would have been obvious to try a locking system without threads.
The opponent has not clearly identified what was the problem with Torq Lok. While Mr Dennis has stated that “in the early 2000s the industry was generally moving away from threaded connections”[6], he provides no basis for this assertion. Although he has stated that threaded connections can be problematic because of fine particles getting embedded within the threads, he also acknowledges that the likelihood of seizure due to fineness contamination was greatly reduced in the Torq Lok as it used a short wide thread. The uncontested evidence of Mr Briscoe is that threaded connections “were and still used because of their advantages, including that they can provide a lot of power to pull a large adaptor onto a large nose and tighten it up and lock it in place”[7]. I am therefore not satisfied that the seizure of the threads due to fine was a recognized problem with Torq Lok and that there was a move away from threaded locks within the industry before the priority date.
[6] Dennis #1 at [19]
[7] Briscoe at [32.2]

Even it was indeed a recognized problem, again there is no evidence to clearly establish that the obvious solution was to convert Torq Lok to a non-threaded system or that this conversion would have involved no more than routine steps. This line of attack on obviousness also fails.
FULL DESCRIPTION
The legal test for full description or sufficiency is set out in the High Court decision in Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd ( 2001) HCA 8; 207 CLR 1; 177 ALR 460; 75 ALJR 518 at [25]:
"The question is, will the disclosure enable the addressee of the specification to produce something within each claim without new inventions or additions of prolonged study of matters presenting initial difficulty?"
This test clearly recognises that there can be an element of trial and error involved which would not necessarily lead to a problem with insufficiency. As McTiernan J. pointed out in AMP v Utilux, (1971) 45 ALJR 123 at page 128:
"Specifications very frequently contain mistakes; they also have omissions. But if a man skilled in the art can easily rectify the mistakes and readily supply the omissions, the patent will not be held to be invalid. The test to be applied for the purpose of ascertaining whether a man skilled in the art can readily correct the mistakes or readily supply the omissions has been stated to be this: Can he rectify the mistakes and supply the omissions without the exercise of any inventive faculty? If he can, then the description of the specification is sufficient. If he cannot, the patent will be void for insufficiency."
The opponent submitted that claims 1, 4, 7, 9, 12, 13, 14, 15, 17 and 21 require that the lock contacts the base to prevent removal of the wear member, but there is no description of the lock contacting the base and as noted by Mr Dennis, the lock described is likely to have a clearance between the lock and the base.
In my view, when one reads claim 1, it is quite clear that the definition the lock is “adjustably movable in the through-hole without threads to (i) contact the base received in the cavity and prevent removal of the wear member from the base” is a functional limitation in that the lock can contact the base during use to prevent the wear member from slipping off the base.
In any event, as noted by the applicant there is no evidence to establish that even if the claim requires the lock to contact the base during the locking procedure, a skilled addressee would not be able to achieve this requirement by providing the lock with low tolerances. In fact when one looks at figure 25, it would appear that the lock does contact the base when it is moved to the locking position.
The opponent has not established that the claimed invention is not fully described.
FAIR BASIS/PRIORITY DATE
Subsection 40(3) requires that the claim or claims in a patent specification be fairly based on the matter described in the specification. As the test for fair basis, the High Court in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58; (2004) 217 CLR 274 (Lockwood) at [69] approved the words of Gummow J in Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79 at 95:
“... the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification.”
The opponent’s submissions in relation to fair basis are entirely in respect of external fair basis and not about internal fair basis. They submitted that the claimed invention is not fairly based with respect to the parent application 2011201135 or the grandparent application 2007241122, and consequently it is not entitled to an earlier priority date. However as none of the prior art or the Torq Lok product relied upon by the opponent is affected by the priority date, I questioned the opponent as to the significance of this submission. The opponent submitted that if the claimed invention is only entitled to an earlier priority date of the date of filing of 9 January 2013, then the claimed invention would be not novel over document AU 20111340794.
When I queried the fact that this prior art document was not in evidence, the opponent requested that I should bring this into the proceedings under the provisions of regulation 5.23.
However the opponent did not provide any submissions explaining how this document anticipates the claimed invention and why it is more relevant than the other documents they have filed in evidence. A quick perusal of this document does not suggest that that it is highly relevant to any of the claims. I am therefore not inclined to consult this document under regulation 5.23.
I therefore do not need to decide on the priority date of the opposed application.
CONCLUSION
None of the grounds of opposition have been made out. I find that the claimed invention is novel, inventive and fully described.
I therefore direct that subject to any appeal of this decision, the application should proceed to grant.
COSTS
The opposition does not succeed. As costs normally follow the event, I award costs according to schedule 8 against the opponent.
R Subbarayan
Delegate of the Commissioner of Patents