Technological Resources Pty Ltd

[2023] APO 6

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Technological Resources Pty Ltd [2023] APO 6

Patent Application:             2019253769

Title:A system for, and a method of, controlling operation of a vehicle in a defined area

Patent Applicant:                Technological Resources Pty Ltd

Delegate:Neil Miller

Decision Date:  2 February 2023

Hearing Date:  30 March 2022, by Video Conference

Catchwords:  PATENTS – Examiner objections – inventive step – combination of documents – construction – virtual perimeter – autonomous vehicle – mining – mobile drill – remote control – operator controlled – inventive step objection not sustainable

Representation:                   Counsel for the applicant: Julian Cooke

Patent attorney for the applicant: Cotters Patent and Trade Mark Attorneys

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application:             2019253769

Title:A system for, and a method of, controlling operation of a vehicle in a defined area

Patent Applicant:                Technological Resources Pty Ltd

Date of Decision:                2 February 2023

DECISION

The examiner’s objections are unstainable.

The invention so far as claimed is considered to not lack an inventive step.

I allow the amendments as proposed on 20 April 2021. I direct that the application as proposed to be amended proceed to acceptance.

REASONS FOR DECISION

Background

1. Australian patent application 2019253769 (“the application”) in the name of Technological Resources Pty Ltd (“the applicant”) was filed on 21 October 2019.  The application is a divisional application to Australian patent application 2018200494 (“the parent application”). The parent application was also the subject of a hearing decision Technological Resources Pty Ltd [2020] APO 42. The Parent is also a divisional application to Australian patent application 2013227999 (“The grandparent”).  The grandparent claims priority from Australian provisional application no 2012904004 filed 13 September 2012.

1. A request for examination was filed on 17 December 2019.  The first examination report issued on 16 December 2019.  The report raised objections for lack of support, lack of novelty, and lack of an inventive step.

2. Subsequent further reports were issued, following responses from the applicant, with the third report being issued on 3 June 2021.  In the third report the examiner maintained that the invention so far as claimed lacked an inventive step.  Following the issue of the third report the applicant requested a hearing.

The Specification

The detailed description

1. At paragraph [02] of the specification, it is stated that the invention generally relates to the control of vehicles and, more particularly, to a system for, and a method of, controlling the operation of a vehicle such as mobile mining machinery in a defined area.

1. At paragraphs [03]-[04] the specification provides background information on one of the key tasks that is performed in open cut mining operations this being the preparation of a drill bench and the drilling of blast holes in the bench.  These paragraphs also highlight advantages of accurately preparing the blast holes in the mining process.  Paragraph [05] of the application provides some initial details regarding the work conducted by the applicant in relation to automated drilling and the advantages it presents.

2. Definitions of the terms “vehicle” and “automated” are provided at paragraph [07]. Here the specification states that term vehicle should be understood in a broad sense to include any suitable mobile machine unless the context clearly indicates otherwise. The term automated and related forms of the word is to be understood to include an autonomous mode of operation and a remote-control mode of operation.

3. A set of consistory statements are provided at paragraphs [08]-[37], with new paragraphs [34]-[37] being added with the amendments proposed on 20 April 2021.  Paragraphs [34]-[37] generally correspond to independent claims 1, 7, 12 and 16 discussed below.

4. The specification then proceeds to discuss the preferred embodiments of the invention.  The discussion of the preferred embodiment primarily focuses on a mobile drill operating within a defined area of a drill bench of an open cut mine.  At [43] the specification notes that while the description of the invention has been made with reference to a mobile drill operating on a drill bench the invention is not exclusively limited to this application and may be applicable to other vehicles and mobile machines.  

5. At paragraphs [44]-[46] a high-level overview of the system of the instant invention is provided. The system includes a virtual safety perimeter (VSP) which bounds the area of the drill bench.  A user interface is also provided, the interface includes an operator console and a plurality of display screens. The operator console in this instance mimics the physical controls of the mobile drill.  The system further includes a controller to which the drill is responsive, the controller being operative to inhibit the drill from touching or approaching within a predetermined range of the VSP.

10.  Additional detail on the arrangement of the mobile drill is provided at paragraphs [47]-[49].  The physical construction of the mobile drill is relatively standard consisting of a wheeled chassis supported on tracks and a deck supporting a drilling rig which includes a drill mast and superstructure. The identified passages also highlight that the mobile drill may be operated in a number of modes including an autonomous mode, a remote-controlled mode or manually controlled by an operator stationed on the mobile drill.  

11.  The specification provides additional detail regarding the arrangement of the user interface when the system is utilised by an operator to control multiple mobile drills at paragraphs [50]-[51].  The arrangements described concern the use of conventional interface techniques and devices i.e., use of touch screen displays and other conventional interface devices such as a mouse etc.

12. At paragraph [52] the operation of the VSP is discussed. The VSP is utilised to denote a boundary of a defined area of the drill bench. As the drill traverses the bench, it drills a series of blast holes, and when the drill comes within a predetermined range of the VSP the controller is operable to disable the drill by placing it in an idling mode. A number of predetermined ranges between 10cm-100cm are then specified in paragraph [53].

13.  The specification then discusses the use of GPS and high precision GPS (HPGPS) devices and the positioning of such devices on the drill.  The specification states that the use of HPGSP device further enhances the accuracy of the positional information provided in relation to the drill which enables the drill to operate at higher tramming speeds. The positional information provided by the GPS devices is also utilised to determine the position of the drill relative to the VSP.  

14.  At paragraphs [58]-[63] various aspects of the visual display provided to the operator are discussed, the discussion includes the provision of warnings and error messages to the operator, displaying the operating mode of the drill e.g. autonomous, remote control etc., the manner in which the VSP is depicted on screen i.e., coloured lines, dashed lines, lines of varying thickness etc.

15.  The specification then proceeds at paragraphs [65]-[70] to discuss the general process for implementing the system of the present invention.  Firstly, the drill bench is prepared and then surveyed to enable the generation of the VSP as a set of geo-coordinates.  The co-ordinates of the VSP are uploaded along with information on the drill pattern into the controller.  Once the VSP and drill hole pattern are loaded the drill is made operational. The controller then determines the position of the drill relative to the VSP. The controller then determines if the drill is operating in autonomous mode, and if so, the controller continues to monitor the position of the drill relative to the VSP using GPS positional data.

16.  If the controller determines that the drill is not within the predetermined range the drill continues its operation of drilling blast holes in the bench according to the drill plan including autonomously tramming between drill hole locations specified in the drill plan.  In the event that the controller determines that the drill is within the predetermined range of the VSP while in autonomous mode the controller places the drill into its idling state.  If the controller determines that drill is being operated in remote control mode and is within the predetermined range of the VSP the controller allows the drill to cross the VSP.  A warning is then generated to inform the operator that the drill has crossed the VSP.

17.  Paragraphs [74]-[78] discuss the communications infrastructure utilised in the system, as well as other components such as the use of pan/tilt cameras etc.  These passages also detail how data is exchanged between the drill and the operator console including various arrangements aimed at reducing the bandwidth required to transmit video and other data from the drill to the operator console.

18.   Additional information concerning the operation of the drill is provided in paragraphs [79]-[87] of the specification.  Here, it is stated that standard practice is to start the drill in the remote-control mode and perform a machine check.  On determination that the drill is operating correctly the drill is switched to autonomous mode via the operator console.  In instances where the console is utilised to control multiple drills this start-up process is repeated for each drill until all drills are operational.  While in autonomous mode the drill or drills traverse the bench and drill the required blast holes in accordance with the preloaded drill hole pattern.  The drill continues in autonomous mode and when the drill comes within the relevant proximity of the VSP it is switched to idle mode and the operator is then able to place the drill into either remote-control mode or autonomous mode via the console.  

19. While the discussion of the preferred embodiment refers to the switching between an autonomous mode and a remote-controlled mode, it is also noted that the specification discloses the ability for the drill to be switched to a mode of manual operation where the operator assumes manual control of the vehicle per the instant application at paragraph [49].

20.  Finally at paragraphs [88]-[111] of the specification additional embodiments are discussed.  It is noted that the language of these passages is similar to that utilised in the set of consistory statements provided at paragraphs [08]-[37].

The claims

21.  The claims under consideration are the claims as proposed to be amended on 20 April 2021.  The claims number 18 in total; of these claims 1, 7, 12 and 16 are independent. Claim 1 as proposed is reproduced below:

A system for controlling operation of a mine vehicle mobile drill in a defined area of a
mine site, the system including:

a perimeter defining an outer boundary of the defined area of the mine site, wherein the

perimeter is implemented as a virtual perimeter which is surveyed after preparation of the
defined area;

a user interface for at least one of controlling and monitoring movement of the vehicle

drill as it traverses the area and monitoring the location of the vehicle drill relative to the
perimeter; and

a controller in communication with the user interface and to which the vehicle drill is

responsive, the virtual perimeter being entered into the controller after having been surveyed,
the vehicle drill having a plurality of modes of operation, one of which is an autonomous mode and another of which is an operator controlled mode, and the controller being operative, when the vehicle drill is operating in the autonomous mode and the vehicle drill comes within a predetermined range of the perimeter, to cease autonomous mode and to notify an operator that the operator is to assume operator controlled mode of operation, the operator being able, at least following the notification, to move the vehicle drill out of the predetermined range of the perimeter, which action includes at least manoeuvring the vehicle drill to cross the perimeter under control of the operator, the user interface being configured to enable the operator to cause the controller to switch the vehicle drill back from the operator controlled mode to the autonomous mode when conditions again permit the vehicle to operate in autonomous mode.

22.  Claim 7 is a method claim that generally corresponds to the system of claim 1.  Claims 12 and 16 concern the control of a plurality of a plurality of drills.  It is also noted that claims 12 and 16 also recite similar limitations to that of claims 1 and 7.  

23.  Dependent claims 2-6, 8-11 and 17-18 recite additional limitations relating to the user interface such as the use of touch screens, haptic feedback, various aspects of the user interface to effect control over various aspects of the drill’s operation.  

Allowability of the amendments

24.  The amendments as proposed on 20 April 2021, add features to the claims that are supported by the discussion at paragraphs [65]-[70] and [79]-[87]. Consequently, the proposed amendments do not appear extend beyond the scope of the specification as filed. The proposed amendments therefore comply with s102(1) and are allowable. Accordingly, this decision is being made on the basis of the proposed amendments as filed 20 April 2021 these being the only amendments filed during prosecution of the application to date.

The Examiner’s Objections

25.  The outstanding objections as detailed in the third report relate to the ground of inventive step.  At item 4 of the third report the examiner contends that the invention as defined in claims 1, 7, 12 and 16 lacks an inventive step in light of the discourse of US7337865 (D1) and the common general knowledge in the art. 

26.  In the examiner’s view D1 is considered to disclose all the features of the claim except for the feature of a virtual perimeter with the permitter being entered into the controller after the mine site is surveyed.  The examiner then states that the use of virtual perimeters within a mine site is well known in the art. In support of this the examiner referenced US 2009/0326734 (D2), US 20120053775 (D3), US 2011/0295423 (D4), US 2011/0035139 (D5) and US 6718235 (D6) as evidencing the common general knowledge in the art.  Consequently, in the examiner’s view, the invention so far as claimed lacks an inventive step in view of D1 when the common general knowledge in the art is utilised  

27.  On a review of the reasoning set down in item 4 of the third report the following passages are of note:

“…the problem being solved by the current invention is what steps to take when a vehicle in an autonomous mode comes within a predetermined distance of the perimeter. A skilled person for such a problem would be a person aware of technologies used in autonomous vehicles (telematics). Additionally since the current invention is in the area of mining industry, a person in the mining area who is aware of mining vehicles and their operation is also part of the skilled addressee group. Therefore the skilled person in this case is a team including a telematics engineer, a mining vehicle operator, a mining safety personnel. D1 is clearly directed to this problem and teaches the same solution as the current invention, i.e., the vehicle switches off from an autonomous mode and an operator takes control of the vehicle, when the vehicle approaches a perimeter.

The fact that the boundary is physical or virtual does not affect the way the invention works. In fact either type of the perimeter provides the same functionality in the context of the problem, i.e., for the vehicle to be aware that it is within a predetermined distance from the perimeter.

Additionally, I do not see any evidence for any problems or difficulties overcome in implementing the virtual boundaries as defined in the claim. There is mention of implementing virtual boundaries in Paragraphs [14], [16], [24], [94] and [96] of the current specification. In all instances this feature is discussed in such general terms that the virtual perimeter and its implementation are clearly considered by the Applicant to be well known to the skilled person.” …

“Applicant asserts that in D1 the perimeter is a physical barrier which would physically stop the vehicle from crossing the perimeter, and therefore teaches away from using non-physical boundaries.

I again respectfully disagree. The access gates Fig. 1 Ref 11 does not physically stop the vehicle. It is indeed a photocell located near the access gates that sense the presence of the mine vehicle (Col 5 lines 5 – 25). Reading this part of D1, it would be readily apparent to a skilled addressee that a message is conveyed to the control system that a mine vehicle has arrived at the access gate Fig. 1 Ref 11. The control system in turn opens the access gate and/or switches the mine vehicle off. Therefore while a physical gate is present to visually mark the boundary, D1 does teach non physical barriers that the mine vehicle responds to.” …

“Applicant has also submitted that the Examiner has disregarded the meaning of two terms area and path and submit that the current invention constantly refers to an area within which the drill traverses in an autonomous mode whereas D1 refers to a predefined route.

With respect, I cannot see how the feature of a drill traversing an area as defined in the claims is different to the vehicle of D1 traversing the area of the mine (Fig. 1 Ref 4) and arriving at the perimeter (Fig. 4 Ref 11) based on the disclosure in the current specification with regards to the term ‘traverse’.”

28.  At item 5 of the third report, the examiner contends that claims 1, 7, 12 and 16 lack an inventive step in light of the disclosure of D1 when combined with D3. As noted above D1 does not disclose the use of a virtual perimeter. The examiner notes that D3 teaches the use of virtual boundaries and the movement or removal of such boundaries.  Consequently, the examiner argued that a person of skill in the art would be motived to combine the teaching of D3 with D1 to arrive at the claimed invention.

29.  The basis for the objection can be best understood with reference to the following passages of item 5 of the third report:

“The problem in front of the skilled person is (a) what steps to take when a vehicle in an autonomous mode comes within a predetermined distance of the perimeter. In addition, and as asserted by the Applicant another peripheral problem is that (b) a vast majority of the perimeter is essentially a permanent physical structure that cannot be moved. Further, the parts of the perimeter defined by physical barriers (for example, the gates) are designed to be placed as desired but not designed to be easily moved and once placed, their position is essentially set.

Based on the fact that the description does not discuss any short comings in the virtual perimeter techniques available in the prior art nor does it discuss the technique used in the current invention, it is considered that problem (b) is not the what the current invention is directed to.
Faced with problem (a) and the teaching of D1, a skilled person would without hesitation implement the solution taught in D1. i.e., to switch the vehicle off from autonomous mode and cross the perimeter in manual/operator-controlled mode, and arrive at the claimed solution.

Faced with problem (b) and the teachings of D1 and D3, in an analogous field, where it teaches deleting an existing boundary and creating a new boundary at P[0244], the skilled person would be motivated to combine the teachings of D3 with those of D1 and arrive at the claimed invention.

Additionally, a skilled person would determine the virtual perimeter after surveying the mine site simply because they do not know the perimeter until the site is surveyed. Therefore these differences do not of themselves constitute a patentable inventive step”

The Applicants Submissions and Evidence

30.  On 23 March 2022, the Applicant filed a document titled “Applicant’s Written Submissions on Hearing of Patent Application No 2019253769”, together with the following evidence:

·     A declaration by Mr Hume Saunders dated 22 March 2022 (“the Saunders Declaration”), accompanied by exhibits HS2-1 to HS2-9.

31.  In their written and oral submissions, the Applicant primarily relied on the material provided in the declaration of Mr Saunders to develop its arguments with respect to the disclosure of D1 and D3. 

32.  Oral submissions were presented during the hearing on 30 March 2022.  During the hearing the applicant submitted that the examiner had erred on a number of points in the assessment of the statutory test for inventive step with respect to the disclosure of D1 and its subsequent combination with D3.  The applicant also raised a number of points relating to the construction of the specification.  More specially the applicant focused on the proper construction of a few specific terms in the present claims.  The applicant’s arguments on the issue of construction and inventive step are addressed in more detail below.

33.  It is also noted that the applicant in their written submission also address the potential combination of D1 with D2 and D4-D6, no doubt for the sake of completeness. The submissions canvas matters that were not raised during the course of examination.  Consequently, I do not intend to discuss these matters in detail, unless it is necessary for me to do so.

Applicable Law and Scope

34.  On 15 April 2013, the Intellectual Property Laws Amendment (Raising the Bar) Act2012 commenced which resulted in significant amendments to the Act and Regulations.  The Application was filed on 22 January 2018 hence the amended provisions of the Act and Regulations apply to the examination of the Application and to these proceedings. This means that I must accept the application if I am satisfied, on the balance of probabilities, that the application complies with the Act.  If I am not so satisfied, I may refuse the application or remit it back to examination for further consideration.  I will only refuse the application if I am also satisfied that providing the applicant with an opportunity to amend will serve no useful purpose, for example, if I consider that any potential negative findings are not rectifiable by an allowable amendment.

35.  Moreover, the present proceedings are in respect to the outstanding objections raised in the third Examination Report and is based on the specification and claims as detailed above i.e. specification and claims as proposed to be amended on 20 April 2021.  Following the principles of natural justice, my decision is limited only to matters covered by the instant hearing.

Person skilled in the art

36.  In KD Kanopy Australasia Pty Ltd v Insta Image Pty Ltd (2007) FCA 481; 71 IPR 615 Kiefel J identified ([16]) the person skilled in the art (“PSA”) as:

“...a person acquainted with the surrounding circumstances of the state of the art and manufacture at the relevant time...They are likely to have a practical interest in the subject matter of the invention...and may often work in the art with which the invention is connected.”

37.  In Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980; 9 IPR 225, Finkelstein J stated at [70]:

“He is the person to whom the patent is addressed and who must construe it. He is the person whose knowledge will determine whether a patent is novel. He is the person who will judge whether a patent is obvious.”

38.  In AstraZeneca AB v Apotex Pty Ltd [2015] HCA 30 (at [23]), the High Court additionally noted that:

“The notional person is not an avatar for expert witnesses whose testimony is accepted by the court. It is a pale shadow of a real person – a tool of analysis which guides the court in determining, by reference to expert and other evidence, whether an invention as claimed does not involve an inventive step.”

39.  In the third report the examiner characterised the person of skill in the art as follows:

“They would be a person aware of technologies used in autonomous vehicles (telematics). Additionally since the current invention is in the area of mining industry, a person in the mining area who is aware of mining vehicles and their operation is also part of the skilled addressee group. Therefore the skilled person in this case is a team including a telematics engineer, a mining vehicle operator, a mining safety personnel”

40.  On a plain reading of the specification, the above characterisation would seem to be a reasonable summation of the sort of skills that would be required of the hypothetical skilled person.  

41.  The applicant in their written submissions at [12] stated that in the present case the PSA is an engineer with expertise in autonomous vehicle technology for use on surface mine sites.  It is noted that the skill set advocated by the applicant generally aligns with that of Mr Saunders.  It is also noted that the applicant does not necessarily agree with the examiner’s characterisation that the skilled person would necessarily be familiar with telematics. However, the applicant concedes at [15] of their written submissions that Mr Saunders’ evidence confirms that he possesses proficient knowledge in respect of telematics in the mining industry related to autonomous mining drills at the Priority Date.

42.  In view of the fact that the applicant and the examiner are in general agreement, I can accept that the notional skilled person would be someone who has an understanding of technologies used in autonomous vehicles i.e. telematics.  The notional person also would have an understanding of mine sites and the operation of mining vehicles within such sites.  It is also apparent from the specification that the skilled person would also require an understanding of the use of virtual safety perimeters including the use of such technologies like that of geo-fences.

43.  Additionally given the evidence before me it is plain that Mr Saunders is a suitably qualified individual with expertise and skills that generally aligns with that of the skilled person as outlined above.  Consequently, there is little doubt that Mr Saunders is well placed to provide evidence as to the sort of information that may have constituted the common general knowledge in the art as and to provide insight as to the understanding of the PSA as at the relevant date.  

Construction

44.  The rules of construction for an Australian patent specification are well summarized in Decor Corp v Dart Industries [1988] FCA 399; 13 IPR 385, however the correct application of these rules to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70; 81 IPR 228 at [118] – [120]:

“the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear...while the claims define the monopoly claimed in the words of the patentee's choosing, the specification should be read as a whole ... it is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification...terms in the claim which are unclear may be defined or clarified by reference to the body of the specification.”

45.  I would also note what was said in Eli Lilly and Company Limited v Apotex Pty Ltd [2013] FCA 214 (Eli Lilly) at [139]:

“It is well settled that the Court should, from the outset, approach the task of patent construction with a generous measure of common sense. The Court must place itself in the position of a person skilled in the relevant art, being the subject matter of the patent. From this perspective, the patent is to be read as a whole, in the context of the specification and in light of the prevailing common general knowledge and state of the relevant art at the priority date.”

46.  During the hearing the applicant submitted that there were a number of key terms within the claims that had been misconstrued by the examiner and thus required consideration.  These terms were as follows:

a.   Mine site;

b.   Virtual perimeter

c.   Autonomous mode; and

d.   Operator controlled mode.

Mine site

47.  During the hearing the applicant submitted that the term mine site as recited in the claims should not be read broadly so as to include underground mining sites.  More specifically the term mine site within the confines of the specification clearly refers to a surface mining site such as an open cut mine.  Support for this interpretation is provided within the claim itself and from a plain reading of the specification as a whole. 

48.  The applicant then proceeded to discuss claim 1 as currently presented noting various indicators within the claim that point toward the fact that the term mine site should be read as meaning a surface mine site.  Firstly, the applicant noted that the use of “virtual perimeter” is one indicator that the term mine site is referring to a surface mining operation.  More specifically, the applicant stated that evidence demonstrates in this instance that the PSA would readily understand that the virtual perimeter in this instance is synonymous with a geo-fence which at the priority date required the use of GPS satellites to function correctly.  Consequently, the mine site can only be a surface mine site as the virtual perimeter would not function underground.

49. The applicant then took me to paragraph [03] of the specification where it is explained that one of the key tasks in open cut mining is the preparation of a drill bench, an additional reference to open-cut mining is also made at paragraph [10]. The applicant submitted that open-cut mining is a particular subset of surface mining operations. The applicant then noted that paragraph [43] refers to an open cut or surface mine. The applicant submitted that giving proper consideration to the disclosure of the specification as a whole, the term mine site within the context of the instant application is clearly referring to a surface mine site.

50.  The second indicator that the mine site is a surface mine site is the use of the phrase “as it traverses the area”.  The phrase requires that there is area to traverse as opposed to a tunnel in an underground mine per se.  Moreover, the phrase implies that the area must be of sufficient size to permit the drill to operate/traverse within the given area, this again highlights that the area is not a tunnel in an underground mine. With respect to this line of argument, I do not believe that it advances the applicant’s case to read the term in a limiting sense.  In an underground mine it is still possible for a vehicle to travel or traverse an area within the mine via one or more interconnecting tunnels.

51.  On a plain reading of the term mine site one valid interpretation of the phrase is a site or location where mining activities are undertaken.  At its broadest interpretation the phrase includes within its scope any form of mining operations such as surface mining i.e. open cut, hydraulic mining etc or subterranean mining i.e. underground mining etc.

52.  While the above interpretation is a reasonable one, it is based on a reading of the term in isolation.  Construction is not a task to be approached in isolation, as the relevant authorities have highlighted, rather construction requires consideration of the context provided by the specification as a whole.

53.  As previously noted, the specification does refer to open-cut or surface mining in a number of places. The repeated references to open cut which is a particular form of surface mining operations implies that that the term mine site within the context of the specification should be read in a limiting sense.

54.  Additionally, the specification clearly details that the preferred embodiment system requires the use of GPS or HPGPS to determine the location of the drill relative to the virtual perimeter.  The applicant’s point as to the operation of GPS technology is well founded, i.e., such technology is inoperative in an underground mining application as the signal is blocked by the mine’s strata.  It is difficult to see how GPS could be implemented in a practical sense within an underground mining scenario.

55.  However, I note that the claims are not limited to the use of GPS to determine the position of the drill. Thus, while I can accept the applicants point regarding the operation of GPS with respect to underground mining operations, the claims are broad enough to contemplate the use of other technologies to determine the position of the drill relative to the virtual perimeter that are capable of being utilised in an underground mining scenario, such as for example proximity sensors etc. This weighs against reading the term mine site in a limiting sense.     

56.  On a review of the arguments presented during examination, I note that there has been discussion that the claimed invention concerns an autonomous drill of the type illustrated in the specification.  As noted above the drill includes a drill mast, as shown in Fig 1 the drill mast 32 extends above the chassis of the drill rig. At paragraph [55] additional information on the configuration of the autonomous drill is provided, here the autonomous drill includes a secondary mast 42 that extends approximately 4 meters the drill bench. As shown in Fig 1 the drill mast 32 extends some distance above the secondary mast 42.  It is therefore apparent that the drill mast 32 extends in excess of 4 meters above the bench surface.  Given this it is difficult to see how a drilling rig of the type discussed in the instant application could be utilised in the confined space of an underground mine site. This position is further reinforced by the evidence of Mr Saunders regarding the general state of the art. More specifically Mr Saunders states autonomous drilling was not carried out in underground mining, the autonomous mining vehicles were load haul trucks moving along a predefined path.

57.  Given the context provided by the specification and the state of the art at the relevant date, I am inclined to agree with the applicant.  Namely one of skill would understand that term mine site in this instance is referring to a surface mine site and more particularly an open cut mine site.    

Virtual perimeter

58.  There is little doubt as to the meaning of the term virtual per the Macquarie Dictionary online “being such in power, force, or effect, although not actually or expressly as such” i.e. something that does not formally or physical exist.  Likewise, the meaning of perimeter per the Macquarie Dictionary online is well established notably “the circumference, border, or outer boundary of a two-dimensional figure”. When the plain meaning is accorded to each term the interpretation that I come to is that the virtual perimeter is a non-physical boundary with the boundary forming a two-dimensional shape.

59.  In their written submissions the applicant points out that the term virtual perimeter as at the relevant date was synonymous with a geo-fence that used GPS technology.  It is this meaning that would be accorded to the term by one of skill in the art.  This interpretation in the applicant’s view is also borne out in the evidence of Mr Saunders.

60.  During oral submissions the applicant took me to paragraphs [44], [52] of the specification where further detail is provided on the operation of the virtual perimeter or virtual safety perimeter (VSP) as it is also referred to in the specification.  At paragraphs [44] and [52] it is stated that the VSP defines a boundary of a defined area of the drill bench.  Further at [56] the specification states that the VSP is implemented as geographical coordinates which define the position of the VSP on the drill bench, these coordinates are then programmed into the controller. It is apparent on reading the above identified passages that the virtual perimeter is a non-physical barrier that bounds an area of the bench.  This interpretation is generally in keeping with the plain meaning of the terms set out above.

61.  With respect to Mr Saunders evidence that virtual perimeter would be understood by one of skill as meaning a geo-fence, as noted above the specification does not seek to limit the virtual perimeter to being a geo-fence. It is also noted that the feature of a geo-fence is also absent from the claims.  Consequently, there is tension between Mr Saunders statements and the disclosure of the specification.  This tension is readily remedied when paragraph [56] of the specification is considered.  Paragraph [56] recites that the VSP is implemented as geographical coordinates which implies the use of a geo-fence. Thus, the specification discloses an embodiment where the virtual perimeter is implemented as a geo-fence.

62.  While it is appreciated that a geo-fence may be one practical implementation of the virtual perimeter of the instant invention, the specification and claims are broad enough to contemplate the implementation of the virtual perimeter via other means.  That is the general concept disclosed in the specification is the use of a virtual perimeter in connection with an autonomous vehicle.  Given the disclosure of the specification I do not believe it appropriate to read the term virtual perimeter in a limiting sense as suggested by the applicant.  In my view the most reasonable interpretation in the present circumstances is that the virtual perimeter is a non-physical boundary with the boundary forming a two-dimensional shape.  

Autonomous mode

63.  The applicant pointed out during oral submissions that there is a distinction drawn between an autonomous mode of operation and remote control of the vehicle.  The applicant advanced that the term autonomous mode, had a specific meaning within the art. Moreover, there is a clear distinction drawn in the specification between an autonomous mode of operation and the remote-controlled mode of operation.

64.  The applicant submitted that this distinction is also clearly articulated in the claim itself as there is a change of mode due to the drill’s interaction with the virtual perimeter i.e., the drill is switched from an autonomous mode to an operator-controlled mode.  The applicant then referred to paragraph [07] of the specification where a definition of automated is provided, the applicant emphasised here that automated is being used in a general sense and includes two distinct modes an autonomous mode and a remote-controlled mode.  Moreover, the distinction between automatic and autonomous operation is also borne out in the evidence of Mr Saunders (Saunders at [33]-[37], [97] and [98]).

65.  When I queried the applicant whether the distinction between autonomous operation and remote-controlled operation was more than simply one of linguistic artifice, their response was to take me to paragraphs [47]-[49] of the specification where the various modes of operation are discussed.  At [48] it is stated that when the drill is in autonomous mode, it operates largely without user intervention under the direction of the controller.  Moreover, it is possible for the operator to override the autonomous mode to switch the drill to a remote-control mode of operation.  The specification also states at paragraph [49] that the operator could take manual control of the drill when the operator is positioned within cabin of the drill. 

66.  The term autonomous as defined in the Macquarie Dictionary Online, means “self-governing or independent”.  On a review of the above discussed passages, it would seem that the term autonomous in this instance is being used in its ordinary sense i.e. the drill/vehicle is self-governing and capable of independent operation without intervention by the operator or an external control system.

Operator controlled

67.  In view of the above discussion and given the disclosure in the specification at paragraphs [47]-[49] it is clear that the term operator controlled is referring to a mode of operation where the vehicle is under the control of the operator.  The specification also makes it clear that operator control may be affected either remotely i.e. by remote control or by direct manual intervention by the operator i.e. manual control.  

Autonomous mode vs Remote control

68.  As noted above the applicant during oral submissions sought to draw a distinction between the autonomous mode of operation and remote control of the vehicle.

69.  On the face of the specification, it is clear that there are two distinct modes of operation: autonomous mode and an operator-controlled mode.  Moreover, given my above analysis it is clear that the operator-controlled mode includes a remote-control mode this being distinct from the autonomous mode.  I am therefore inclined to agree with the applicant’s view that there is a distinction to be drawn between autonomous mode and remote-controlled mode.  In the autonomous mode the vehicle operates without any intervention from the operator.  In the alternate mode of operation, the vehicle is under the control of the operator either remotely or via direct manual control.

Inventive Step

70.  The statutory basis for inventive step for this opposition is set out at s7(2) and s7(3) of the Act as it stood after commencement of the Raising the Bar 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 (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).

(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 that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have combined.”

71.  The question of obviousness has been extensively considered by the courts. In particular Aickin J. stated in Wellcome Foundation Ltd. v VR Laboratories (Aust) Pty. Ltd. [1981] HCA 12 at [45]; (1981) 148 CLR 262 at 286 (“Wellcome Foundation”):

“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.”

72.  In Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59; 212 CLR 411 at [53] (“Aktiebolaget Hassle”), the High Court accepted the approach taken in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157 at [187] where Graham J posed the reformulated Cripps question:

“Would the notional research group at the relevant date, in all the circumstances, ... directly be led as a matter of course to try [the claimed combination] in the expectation that it might well produce a [useful or better result]?”

73.  A common approach to determining inventive step is the problem-solution approach as per Wellcome Foundation.  Once the problem has been formulated and the common general knowledge and the prior art base has been determined, the question of whether the claimed solution is obvious must be addressed. 

74.  I am however mindful that the use of the problem solution approach needs to be somewhat tempered.  It is well established in patent law that an invention need not solve or address a particular problem.  In such cases one must be cautious in the use of the problem solution approach.  Moreover, the Full Bench of the Federal Court in AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99 (“AstraZeneca”) at [202]-[203], effectively stated that when formulating the problem, it is not permissible to incorporate information that is not available to the person skilled in the art as either common general knowledge or information available under section 7(3).

75.  In relation to what level of inventiveness is required to sustain a patent, the Full Federal Court in Garford Pty Ltd v Dywidag Systems International Pty Ltd [2015] FCAFC 6 (“Garford”) stated at [44] as follows:

“The inventiveness required to sustain a patent for a claimed invention is quite small. A ‘scintilla’ of inventiveness is all that is required: Alphapharm at [195]. However, there must still be ‘some difficulty overcome, some barrier crossed’ (per Lockhart J in RD Werner & Co Inc v Bailey Aluminium Products Pty Ltd [1989] FCA 57; (1989) 25 FCR 565 at 574) or some contribution to the art “beyond the skill of the calling” (Allsop Inc v Bintang Ltd [1989] FCA 297; (1989) 15 IPR 686 at 701)”.

The problem

76.  As noted above the examiner states that the problem to be solved in the present case is what steps to take when a vehicle in an autonomous mode comes within a predetermined distance of the perimeter.

77.  The applicant at [17] of their written submission states that the problem to be solved is what steps to take when a mining drill in an autonomous mode comes within a predetermined distance of a virtual perimeter.

78.  I note here that the problem as identified by the applicant and the examiner are similar, the difference in phrasing is due primarily to the applicant adhering to the wording in the claims as amended on 20 April 2021.

79.  The problem as articulated by the applicant and examiner can be stated as follows:

“What steps should be undertaken when an autonomous vehicle operating in autonomous mode comes within a predetermined distance of a virtual perimeter?”  

80.  On a review of the specification, it is noted that there is no definitive statement as to the problem being addressed by the by the instant invention. At paragraph [06] it is stated that the applicant believes further benefits be obtained by controlling a plurality of drills simultaneously. This however presents other challenges that need to be overcome.  As noted above paragraphs [43]-[49] focuses on the operation of a single drill. At paragraph [50] it is stated that system is intended for use in permitting one operator to control multiple drills.  Further discussion on the control of multiple drills is then provided at paragraphs [55], [71]-[73] and [78]-[80].

81.  Thus, while there is a focus on what steps the drill is to undertake when it encounters a virtual perimeter it is done in the context of the control of a vehicle within a fleet of vehicles. When viewed in this way the specification appears to be more concerned with addressing the challenges associated with the control of multiple autonomous vehicles operating across the entire mine site.    

The Common General Knowledge (CGK)

82.  As noted above the examiner in their objection states that the use of virtual perimeters in a mine site is well known in the art. In support of this the examiner references D2-D6 as evidencing the state of the common general knowledge in the art.  More specifically the examiner notes that each of D2-D6 disclose the use of virtual perimeter in the context of mine site or similar work sites.   

83. During oral submissions the applicant stated that there was no dispute about the use of geo-fences/virtual perimeters with an autonomous drill was CGK at the relevant date. This being consistent with the statement presented in the applicant’s written submissions at [37].

84.  More specifically at [37] of their written submissions, the applicant states, with reference to the Saunders declaration that the following information was GGK as at the relevant date:

·     When operating in autonomous mode, drills were generally programmed to avoid geofences and operated (that is, performed certain tasks) within an area bounded by the geofence.  When the drill breached the geofence, the drill would be shut down;

·     given the use of GPS and the associated limitations of that technology, geofences were associated with surface mining operations and not underground mining operations;

·     physical perimeters or boundaries were also known in the mining industry to be used to inhibit the movement of an autonomous drill. The use of a physical perimeter necessitated the use of physical proximity sensors and/or cameras to identify the physical boundary;

·     physical boundaries were commonly used in underground mining as the physical boundary comprised inherent structures of the mine such as mine tunnels, along with additional structures such as gates or windrows.

·     Virtual perimeters did not use physical boundaries (Saunders declaration at 14)  

·     autonomous drilling was not carried out in underground mining, the autonomous mining vehicles were load haul trucks moving along a predefined path.

Consideration of Inventive Step

85.  As previously noted, the present proceedings are primarily concerned with the outstanding matters raised in the third Examination Report, namely the invention so far as claimed lacks an inventive step in view of D1 when combined with the CGK or D3.  

86.  In oral submissions the applicant advanced that without the benefit of the expert evidence, such as that presented in these proceedings, the examiner had erred in their characterisation of what constitutes a virtual perimeter. The applicant also submitted that contrary to the examiner’s assertion D1 fails to disclose several salient features of the invention as claimed.  Most significantly D1 fails to disclose a mobile drilling unit that operates in an autonomous mode.

Consideration of inventive step in light of the CGK alone

87.  In the present case the invention so far as claimed recites the use of an autonomous drill that is switched between an autonomous mode and an operator controlled mode, when the vehicle is within a predetermined distance of the virtual perimeter autonomous mode is ceased and a notification is sent to an operator that the operator is to assume operator controlled mode of operation, the operator being able, at least following the notification, to move the vehicle drill out of the predetermined range of the perimeter, which action includes at least manoeuvring the drill to cross the perimeter under control of the operator, the user interface being configured to enable the operator to cause the controller to switch the vehicle drill back from the operator controlled mode to the autonomous mode when conditions again permit the vehicle to operate in autonomous mode.

88.  It has been established on the evidence before me that when an autonomous vehicle breached a geo-fence the vehicle was shut down. Once the drill is shut down it is logical to expect that there would then need to be operator intervention to restart the vehicle. It is also reasonable to assume that in restarting the vehicle that the operator would need to manoeuvre the vehicle back into its predefined operating zone i.e. back inside the virtual perimeter before the vehicle could then be switched back to its autonomous mode. Thus, the operator actions as defined in the claim appear to be nothing more than routine steps that would be affected by the operator in order to return the drill to autonomous mode.

89.  Where the distinction between the claimed invention and what was generally known in the art lies in the manner in which the autonomous drill of the instant application interacts with the virtual perimeter.  As discussed above autonomous vehicles at the relevant date were programmed to avoid geofences and in the event of a breach the vehicle was shut down. By contrast the vehicle as claimed is capable of operating within a predefined distance of the perimeter and when this margin is breached the vehicle actively passes control of the vehicle to the operator who is then able to take corrective action. 

90.  There is nothing in the evidence before me that suggest that such an active handover of control would be obvious to one of skill in the art, rather the CGK teaches away for such an approach i.e. active avoidance the preimeter and wholesale shut down of the vehicle in the event of a breach of the perimeter.

91.   I am therefore satisfied that the invention as claimed involves an inventive step in view of common general knowledge alone.      

Consideration of D1 when combined with the CGK

92.  D1 is directed to a system and method for transferring mine vehicles between operational areas.  As noted at Col. 2 lines 40-51 of D1 the essential idea of the invention is that an unmanned vehicle is driven from an operational area to an intermediate space where the vehicle is then switched to manual mode and is then driven by a driver out of the intermediate space.

93.  Per the discussion of D1 at Col 3 line 8-line 59 and Fig 1, it is apparent that the mine site is an underground mine site that is composed of a number of tunnels where the mining vehicle is free to operate (the operating area).  An operating area is also defined by cordoning an area of the mine site via the use of one or more boundary gates.  D1 also discloses that boundary gates can also be utilised to define a safety path. In such instances various gates are closed or opened to define the desired path through the mine for the vehicle to follow.

94.  Under the system of D1, access stations are provided at select areas of the mine to enable the mining vehicles to be transferred to and from the operating area.  The access stations are comprised of two access gates, a first gate being on the operating area side and a second access gate on what the specification refers to as the manual area i.e. the area in which the vehicle is to be manually operated.  An intermediate space is provided between the two access gates.  To enable the vehicle to be transferred to and from the operating area the vehicle is driven to the access station and into the intermediate area where the vehicle is switched to either unmanned mode when transferring to the operating area or manual mode when transferring out of the operating area.

95.  The operation of the mining vehicle is then discussed with reference to Fig 2 at Col 3 line 60-Col 4 line 27.  Here it is explained that the mining vehicle can be driven via remote control, where control commands are sent from a control room to a control unit positioned on the vehicle.  D1 also discloses that the vehicle can be driven automatically along a predefined route.  The route may be formed by teaching or via the use of an electronic map of the mine.       

96.  At Col 4 line 64 – Col 5 line 30 further detail is provided on the interaction between the vehicle and the access station.  Here D1 discloses that the control system sends a control command to the vehicle to move to a defined access station. After receiving the control command, the vehicle moves towards the defined access station.  The vehicle can be transferred to the access station by remote control along a pre-taught route.  As the vehicle approaches the access station the first gate is opened by the passage control system and the vehicle is driven unmanned into the intermediate space.  The vehicle is then switched off and the first access gate is closed.  The second access gate is then opened to allow a driver to enter the vehicle and assume manual control.  The vehicle is then driven by the driver from the intermediate space and the second gate closed.  

97.  The question at issue is would the invention in so far as claimed be obvious to one of skill in the art given the disclosure of D1 in combination with the CGK.  As a general premise the appropriate starting point for the determination of obviousness is the citation.  As it is succinctly put in s7 the Act:

“…an invention is to be taken to involve an inventive step when compared with the prior art base [i.e the citation] unless the invention would have been obvious to a person skilled in the relevant art”   

98.  This general premise that the appropriate starting point in the assessment of obviousness being the prior art was affirmed in AstraZeneca at [192]- [230]. The decision in AstraZeneca is also in keeping with the other established legal authorities which address the issue of ex-post facto dissection of the claimed invention in order to establish obviousness.

99.  In written submissions and at the hearing the applicant highlighted the evidence of Mr Saunders where it is established that at the relevant date virtual perimeters were synonymous with geo-fences that used GPS technology.  Such technologies do not work in underground mining application and thus it would not be logical let alone obvious to use such technologies in an underground application. Consequently, the examiner’s assertion that it would be obvious to use such technologies in the system of D1 is erroneous.

1. On a review of the case history, I note that there has been much debate as to whether certain documents demonstrate the fact that the use of virtual parameters per se and more specifically geo-fence was CGK as at the relevant date.  These points are however moot as the applicant does not dispute that the use of virtual perimeters was known in the art at the relevant date.  Moreover, there is little doubt based on the evidence submitted in this matter that at the relevant date, that from a practical standpoint, the virtual perimeter of the instant invention was at least realised as a geo-fence.  This is also apparent from the specification’s discussion of the preferred embodiment where the virtual perimeter is implemented as a set of geographic coordinates i.e. a geo-fence.

2. In addition to the above it is also noted that of the documents relied upon by the examiner as evidencing the CGK are those that explicitly reference the use of virtual perimeters, boundaries or zones all of which utilise a GPS based solution to define the desired boundaries or areas.  This lends further support to the applicant’s position regarding the use of geo-fences within the art.

3. As the applicant has noted geo-fences require the use of GPS technology which requires a line of clear communication to function as required.  Here the applicant’s point regarding the use of GPS in an underground mining environment such as that discussed in D1 is well made. Such GPS geo-fences would not be able to function as required, as GPS is unable to function in an underground mining environment as the necessary positioning information is blocked by the mine strata.

4. However, as noted above the claims are not limited to the use of a geo-fence per se.  Likewise, the specification does not seek to specifically limit the implementation of the virtual perimeter to a geo-fence.  Consequently, the general concept discussed in the specification concerns the use of a virtual perimeter in connection with an autonomous vehicle and what steps to take when such a vehicle interacts with the virtual perimeter.

1. Here I am drawn to the following comments in the examiner’s third report:

   D1 is clearly directed to this problem and teaches the same solution as the current invention, i.e., the vehicle switches off from an autonomous mode and an operator takes control of the vehicle, when the vehicle approaches a perimeter.

   The fact that the boundary is physical or virtual does not affect the way the invention works. In fact either type of the perimeter provides the same functionality in the context of the problem, i.e., for the vehicle to be aware that it is within a predetermined distance from the perimeter.

   Additionally, I do not see any evidence for any problems or difficulties overcome in implementing the virtual boundaries as defined in the claim….

1. The applicant in their written and oral submissions stated that given the physicality of the underground environment in D1 the need for virtual perimeters is negated.  Consequently, D1 does not address the same problem.  Moreover, owing to the reliance on physical barriers D1 teaches away from the claimed invention.  The applicant also submitted that D1 fails to disclose an autonomous vehicle which is switched between an autonomous mode and an operator-controlled mode as claimed.

1. In relation to question of whether D1 discloses an autonomous mode the applicant drew attention to the statements of Mr Saunders and more specifically to [34]-[36] of the Saunders declaration.  Here Mr Saunders notes that while D1 mentions terms like “driven automatically”, “automatic mode” and “automatic mine vehicles” this mode of operation is however not an autonomous mode.  Rather the automatic operation as defined in D1 requires actions to be carried out in a predefined sequence as for example traveling along a pre-defined route.   If an external factor inhibits this sequence of events, then the system reacts in a predefined manner.  This is to be contrasted with an autonomous mode, vehicles in autonomous mode are able to make decisions based on situational factors and solve problems when they encounter unforeseen problems.  

1. It was here in the proceedings that I sought clarification from the applicant as to their understanding of the pre-taught route.  The teaching as referred to in D1 implies the vehicle is capable of learning which is suggestive of an autonomous mode.  The applicant’s response to this was that the pre-taught route was a preprogramed route wherein the vehicle was guided via a series of navigation points or waypoints where the vehicle then performed particular actions.  The vehicle is not provided with any autonomy it simply follows a pre-set path and is incapable of reacting to changes within its operating environment.  By contrast autonomous vehicle are able to respond to changes in their operating environment, and determine what actions to undertake in view of such changes i.e. they are capable of independent action.

2. As I have noted above there is a distinction to be drawn between autonomous mode and operator-controlled mode in the instant application.  In autonomous mode the vehicle is capable of independent action and under operator-controlled mode the vehicle is under the control of the operator either via remote control or direct manual control.  I note here that the construction I have accorded autonomous mode is in line with Mr Saunders understanding of the term.  In addition to this I also note that a similar understanding of the term is expressed in D3 at paragraphs [0342] and [0343] which are referenced in the Saunders declaration at [46] and [47].             

3. On a reading of D1 at Col 3 line 60 - Col 4 line 27 and Col 4 line 64 – Col 5 line 30 it is clear that in automatic/unmanned mode the vehicle is either remotely controlled by an operator or remotely controlled by the passage control system i.e. the passage control system sends a command signal to the vehicle. Accordingly, the vehicle in the system of D1 is remotely controlled when in unmanned operation.  Thus, the unmanned mode of D1 is more aligned with the operator-controlled mode of the instant application.

1. In light of the above, I am therefore inclined to agree with the applicant.  D1 does not disclose an autonomous mode as it would be understood by one of skill in the art.

2. Turning to the applicant’s point that the physicality of the underground mining environment negates the need for a virtual boundary. As I have noted above at [104] the examiner contends that whether the boundary is physical or virtual does not affect the way the invention works, both serve the same functionality in the context of the problem. Thus, the vehicle needs to simply be aware of the perimeter.   I do not concur with this line of reasoning, I will address this issue in more detail below.

3. Also at issue here is the manner in which the examiner has phrased the assessment of obviousness.  As discussed above the proper starting point in assessing the question of obviousness is the citation.  The question is not whether the swapping of the virtual barrier with the physical barriers of D1 would affect the manner in which the invention of the instant application operates.  The claims are abundantly clear that the invention of the instant application requires the use of a virtual perimeter. 

4. The proper question in this case is given the teaching of D1 and the identified problem would it be obvious to the PSA to utilise a virtual perimeter within the system of D1.  If so, would the substitution of the physical barriers for virtual ones result in the claimed invention.

5. As to the question of whether it be obvious to the PSA to utilise a virtual perimeter within the system of D1, under the system of D1 the unmanned vehicles are transferred to and from the defined working area via discrete access/passage stations. Thus, in the defined working area of the system of D1 the majority of the perimeter is made up of physical walls.

6. As noted above, the system of D1 provides for a number access/passage stations. While the operation of these access/passage stations is discussed based on the use of physical barriers such as access gates (D1 Figs 4-6 and corresponding discussion regarding same), D1 does discuss an alternative arrangement that does not require gate. At Col. 5 lines 61-67, D1 discusses the use of one or more sensors arranged in connection with a boom mounted from the ceiling of the tunnel.  Information from the sensors is then passed to the passage control system to enable the mine vehicle to be switched off. In this embodiment sections of the perimeter of the working area are replaced with what could best be described as virtual checkpoints.      

7. D1 in my view teaches a system where a safe working area is defined by various physical barriers i.e., mine walls, access gates and virtual checkpoints. Given the disclosure of the virtual check point the question arise whether it would be obvious to extend the virtual check points to form a virtual perimeter.  Here I am drawn back to the examiner’s comments that in the context of the problem the fact that the boundary is physical or virtual is not material. However, there is an inherent difference between the nature of a physical barrier and a virtual one in this context.

8. The evidence provided in this case clearly establishes that physical barriers such as walls, gates, windrows were utilised within the mining industry. These physical boundaries were used to inhibit the movement of autonomous vehicles.  As I have discussed above the meaning ascribed to term virtual perimeter in this case is a non-physical boundary or barrier. Owing to the lack of physical presence the virtual perimeter does not inhibit movement of the vehicle. Rather it is possible for the vehicle to cross the virtual boundary before corrective action is taken. This is evident in the in operation of D1 with respect to the virtual check point i.e. when the threshold of the check point is crossed the system then takes action. It is also evident in the systems of the prior art that were CGK, in such systems the autonomous vehicle was shut down on breaching the virtual perimeter.      

9. In the present case the physical construction of an underground mine is also a factor.  The construction of such sites necessitates the use of walls between section of the mine to ensure stability thus areas of the mine will always bound by one or more physical barriers.  Consequently, the physical nature of the mine site itself is not conducive to allow for the implementation a virtual perimeter.  Moreover, D1 teaches an embodiment where a virtual check point is utilised but fails to contemplate the use of a virtual perimeter. In view of these factors, I do not believe it would be obvious to the PSA to implement a virtual perimeter within D1.   

1. For completeness I will now address the question of whether the implementation of a virtual perimeter in the system of D1 would result in the claimed invention. During the prosecution of this case and these proceedings a focus has been cast on the operation of the autonomous vehicle as it approaches the virtual perimeter. The examiner formed the view that D1 discloses switching the vehicle off from autonomous mode to manual/operator-controlled mode as the vehicle approaches the perimeter once in manual mode the vehicle is the able to cross the perimeter.

2. On closer examination of D1 I note that it discloses the use a photocell to detect the approach of the vehicle as it moves towards a designated access gate.  In response to this the control system either opens the gate to permit the entry of the vehicle into the holding area or performs an emergency stop to avoid a collision with the gate (see D1 Col 5 lines 9-17).  Thus, the passage control system of D1 is able to undertake a number of actions on detecting an approaching vehicle i.e. stop the vehicle or open the gate to provide access to the intermediate area.  D1 therefore address the issue of what steps are to be undertaken when the vehicle approaches a physical boundary. In the case where the virtual checkpoint is utilised the system of D1 senses when the vehicle crosses the boundary and then takes the appropriate action. 

1. On a plain reading of D1, it is more concerned with the transfer of the vehicle between two distinct zones of the mine site.  The solution proposed by D1 is that the vehicle is driven under a remote-control mode to a holding area where a driver then takes manual control of the vehicle.  Whether a physical gate or virtual checkpoint is utilised the result is the same, the vehicle enters the access/passage station and is then shut down. As previously stated D1 does not disclose an autonomous mode of operation as would be understood by the PSA. Contrary to the examiners assertion there is no provision in D1 for the control of the vehicle to be switch from autonomous mode to the operator-controlled mode when the vehicle is within a certain range of the boundary. This situation is not remedy by the CGK in the art, rather the teachings of D1 align with the established procedures which is to shut down or switch off the vehicle once it has exited the designated safe working area.  

1. In light of the above, it is clear to me that D1 fails to teach or suggest a number of salient features of the instant invention as claimed. Most notably the provision of an autonomous mode and switching from this mode to an operator-controlled mode.  Nor does D1 permit the vehicle once being switched to operator-controlled mode to be driven across the perimeter and back into the safe working area by the operator. In accordance with the system of D1 the vehicle is driven out of the mine under manual control before being returned a designated access/passage station for return to the safe working area. The omission of such features is not readily remedied by the CGK relied upon by the examiner or entered into evidence before me.  

1. I am therefore satisfied that the invention as claimed involves an inventive step in view of the disclosure of D1 when considered together with the CGK.

Consideration of D1 in Combination D3

1. The examiner contends that the invention so far as claimed also lacks an inventive step in light of the disclosure of D1 when combined with the teaching of D3.  On a review of the examiner’s reasoning, it appears that the combination of D1 and D3 in this instance has been made in respect of a secondary problem identified by the examiner.  The secondary problem as identified by the examiner relates to the repositioning or redefinition of the virtual barrier.

1. D3 is directed to a system and method for regulating the movement of autonomous vehicles between zones of a work site and in particular a mine site.  Under the system of D3 a number of zones are defined, these zones are what D3 refers to as islands of automation (IoAs). Further explanation as to the manner in which the IoAs are implemented is provided at paragraphs [0055]-[0056]. Here it is stated that the IoAs are defined as localised zones or partial regions within the mine.  D3 also discloses that IoAs may effectively change location with time or the shape of the boundary of the IoA may be changed over time; this process is further discussed at paragraphs [0244]-[245] of D3.  Each of the IoAs operates its own set of entry points, exit points, rules and constraints.  At [0056] D3 discusses how the IoA can be made up of a series of physical barriers and virtual barriers such as GPS based mapping viz geo-fences.

2. At paragraph [0057], D3 states that the transition into and out of the IoAs is strictly controlled and the concept of a transition zone is utilised to manage access into and out of IoAs.  The operation of the transition zones is discussed with reference to Figs 9 and 10 at paragraphs [0246]-[0294].  The basic operation as described in these paragraphs is that when an autonomous vehicle is required or otherwise needs to transfer from one IoA to another the controller in the originating IoA commands the autonomous vehicle to proceed to a transition zone that spans the boundary between the originating zone and the destination zone.  Once in the transition area a double handshake protocol is used to register the autonomous vehicle with the controller of the receiving IoA.  Once registered with the receiving IoA the autonomous vehicle is then allowed to exit the transition zone and enter the receiving IoA under the control of the controller of the receiving IoA.

3. Based on disclosure at [0055] regarding the ability to change the location size and shape of the IoAs, the examiner’s reliance on D3 is understandable at least in the context of the secondary problem.  However, the question to be addressed is not whether D3 contains a certain feature but rather given the disclosure of the cited references would it be reasonable for a person of skill in the art to combine the disclosure of the references and so arrive at the claimed invention. 

4. In the present case the examiner is of the view that given the fact the D1 and D3 are in an analogous field that this would provide sufficient motivation for the PSA to combine the references in the manner suggested.  The applicant in both written and oral submission set forth a number of reasons as to why the proposed combination would not be made by a PSA as suggested by the examiner.

5. Firstly, the applicant in their written submission stated that there is no cross reference in D1 or D3 to the other document. I appreciate that the point being made by the applicant here goes to the issue of motivation to combine.  More specifically that there is no suggestion in the documents themselves that would provide a motivation for the PSA to combine the references.  While it is evident that there is no such cross reference in the documents concerned, this in and of itself, is not determinative of whether there would be a motivation to combine.  The point being made by the examiner in this instance is that both D1 and D3 are in the same technical field making it more likely that the PSA would look to combine the teaching of the references.   

1. The next point made by the applicant as to the proposed combination is that the disclosure of D1 is not conducive to the use of virtual perimeters.  D1 concerns an underground mine whereas D3 concerns a surface mine.  The applicant at this stage of the oral proceedings again made reference to the evidence of Mr Saunders with respect to the usage of GPS geofences and their incompatibility with an underground mining scenario.  Consequently, a PSA would not look to combine the virtual perimeter of D3 with the disclosure of D1 as asserted by the examiner.

2. As I have stated above, I concur with the applicant’s position that the use of GPS based virtual perimeters are not suited for use in underground mining operations such as that disclosed in D1.  D3 clearly implements virtual perimeters utilising a GPS based approach.  Given that such GPS virtual perimeter would fail to operate as required in the system of D1, it would be unlikely that a PSA would look to make such a combination given that there would be no reasonable expectation of success.

1. Even if a PSA were motived to make the combination as suggested by the examiner, the question that remains to be answered is whether the proposed combination would result in the claimed invention.  During the hearing the applicant highlighted that neither D1 nor D3 deal with what to do when a mining vehicle in autonomous mode comes within a predetermined distance of a perimeter virtual or otherwise.

1. As I have noted above, the system of D1 is able to detect the approach of the vehicle on route to a designated access/passage control area. The system of D1 is then able to undertake a number of actions including stopping the vehicle or opening gates etc to permit the passage of the vehicle into an intermediate area. Once in the intermediate area the vehicle is switched off before manual control is assumed. D1 does not disclose an autonomous mode and as such does not contemplate switching form this mode to an operator-controlled mode when the vehicle is within a particular range of the perimeter.

1. Likewise, D3 discloses that the vehicle is transferred into a transition zone that spans the boundary/perimeter of a first defined working area and a second defined working area.  A handover is then performed, and the vehicle is then moved to the second working area. D3 provides little detail as to the operation of the autonomous vehicles during this process other than they are driven to the designated transfer area where the handover between the controlling IoAs is performed. There is no apparent teaching in D3 that suggest that the vehicle is switched out of autonomous mode during this process. On a closer review of the process as described at [0260]-[0282] the vehicle enters the transition zone and awaits the receipt of the receiving IoAs controller as to the bounds of the receiving IoA and trajectories etc. Once handover is complete the vehicle then proceeds into the receiving IoA where it continues its operation. There is nothing in these passages to suggest that the vehicle of D3 is switched out of the autonomous mode.

2. Based on the above review both D1 and D3 in my view are concerned with processes for the handover of an automatic or autonomous mine vehicle from one zone of a mine to another zone.  Both D1 and D3 offer a similar solution to this issue namely they both send the vehicle to a holding area in order to affect the desired transfer.  Neither D1 or D3 teach or suggest the switching of the autonomous vehicle from the autonomous mode to an operator-controlled mode when the vehicle is within a predefined range of the perimeter.  Nor do D1 or D3 allow/teach the operator to return the vehicle to autonomous mode once the operator has returned the vehicle to the safe working area. As a result, the combination of D1 and D3 in my view would not result in the claimed invention.     

3. In light of the above, I am of the view that the inventive step objection based on the combination of D1 and D3 is not sustainable.  Firstly, there is in insufficient motivation either in the documents themselves or the common general knowledge available to the PSA that would lead them to combine or otherwise modify the reference in the manner proposed by the examiner.  Moreover, even if the combination were to be made it would not result in the claimed invention.

4. I am therefore satisfied that the invention so far as claimed involves an inventive step in light of the combination of D1 and D3.

Conclusion

1. I have found that the examiner’s objections are not sustainable.  I am satisfied based on the evidence before me that the invention as presently claimed involves an inventive step over the art of record.

1. I allow the amendments as proposed on 20 April 2021. I direct that the application as proposed to be amended proceed to acceptance.

Neil Miller

Delegate of the Commissioner of Patents