Thomas Anthony Meyers v Caterpillar Inc

[1990] APO 28

PATENTS ACT 1952

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 568153 by THOMAS ANTHONY MEYERS and Opposition by CATERPILLAR INC. under Section 59.

Background
         On 8 March 1984 and 7 August 1984 THOMAS ANTHONY MEYERS lodged applications for patents accompanied by provisional specifications, the applications being numbered as PG3954 and PG6441 respectively.  On 28 September 1984, by virtue of the provisions of section 50 of the Act, the applicant filed a single complete specification in respect of those applications for an invention entitled "Improvements to Grader Blade Assemblies".  Acceptance of the applications and complete specification was notified in the Official Journal of 17 December 1987 under serial No. 568153 and Notice of Opposition under section 59 was lodged on 16 March 1988 by CATERPILLAR INC.
         After being granted a number of extensions of time, the opponent eventually served its evidence in support on 19 January 1989.  The applicant did not file any evidence in answer within the prescribed time, namely by 19 April 1989.  In fact on 18 May 1989, the Attorneys for the applicant advised the Patent Office:

"Pursuant to negotiations with the opponent it is not intended to serve Declarations in Answer, rather, it is proposed to resolve the issue at a Hearing prior to which amendments will be proposed to the subject patent application."

On 17 August 1989, the applicant requested that the opposition be set down for hearing and also lodged a request to amend pursuant to section 77.  In so doing the applicant provided the following comments in explanation of its actions:

"In anticipation of an invitation by the Hearing Officer to make amendments pursuant to Section 77 of the Act we are enclosing an application to amend under Section 77 in order that the Hearing may be conducted in the context of the amendments as proposed, if such amendments are indeed allowable."

As the applicant was desirous of having the opposition matter heard at the earliest possible opportunity, the parties were informed that a hearing would be scheduled, at which time the accepted specification as well as the proposed amendments could be considered.  The hearing took place on 6 March 1990 in Canberra.  The applicant was represented at the hearing by Mr P.C. Fisher, patent attorney of G.R. Cullen & Co, and Mr A.W. Cowie, patent attorney of Cowie, Carter & Hendy, represented the opponent.
         The grounds of opposition listed in the notice of opposition are those specified in paragraphs (c)‑(e), (g)‑(i) of sub‑section 59(1).  In addition the notice indicated a possible challenge to the priority date of the claims.  However at the hearing submissions on behalf of the opponent were confined to the opposition grounds of anticipation and obviousness.
The Specification as Accepted
         The invention relates to improvements in cutting blade assemblies of road graders of the type having a transversely disposed mouldboard with a detachable ground engaging blade.  In particular the invention concerns the provision of a cutting blade assembly which is suitable for use in grading unsealed earthen road surfaces which may become highly compacted after prolonged periods of use.
         The specification indicates that detachable blades of the type having either a straight edge or a serrated edge are ineffective because they tend to skid over a highly compacted road surface or are subject to breakage when used on such a surface, respectively.  Another blade assembly which has pointed cutting edges on a blade is said to fracture the upper portion of the earth surface and thus result in a loose uncompacted and irregular road surface.
         After these references to prior art devices the specification continues:

"... There is a need therefore for a cutting pick for a grader blade assembly which in use is effective to shave the compacted road surface to remove irregularities therefrom without causing the compacted road surface to become fractured and lose its structural integrity.

The present invention aims to overcome or at least alleviate some of the above disadvantages by providing a replaceable cutting pick assembly for motor graders."

It is then indicated that such replaceable picks of the present invention are provided with a hardened tip, and that in use they may be easily replaced on an individual basis if subject to damage or wear.
         The description includes a statement of the invention in similar terms to claim 1.  Claim 1 as accepted is as follows:

"1.A cutting blade assembly for attachment to the mouldboard of an earth grader, said blade assembly comprising:

an elongate mounting member adapted for attachment along a lower edge of a grader mouldboard, said mounting member including along its lower edge a plurality of spaced sockets for releasably locating cutting picks in spaced relationship; and

a plurality of removable cutting picks each locatable in a respective socket to form a discontinuous cutting edge along a lower edge of said blade assembly, each said cutting pick having:

a supporting shank including retention means for releasably retaining said supporting shank in a respective one of said sockets; and

a body portion having a substantially planar leading surface, said leading surface including a hardened metal alloy working face having a transverse straight cutting edge adjacent a free end of said body portion remote from said supporting shank."

A description of a preferred embodiment of a cutting blade assembly is provided in the specification with reference to a number of drawing figures.  The cutting pick of this embodiment consists of a cylindrical supporting shank portion and a body portion extending therefrom which provides a soil working face and cutting edge.  The body portion has a planar rectangular leading surface with a hardened transverse face at its lower extremity to provide a straight cutting edge, planar side surfaces normal to the leading surface and a trailing surface which is angled relative to the leading surface so as to form a body portion of tapered form when viewed from the side being narrower at the cutting edge end.  The end of the body portion, that is the end opposite the end from which the supporting shank projects, is shown in the drawings as a planar surface which is at an angle to the leading surface and which is parallel to the earth surface when the cutting pick is in use on a grader.
         Apart from claim 7 which is an omnibus claim directed to a cutting blade assembly, the other claims are claims appended either directly or indirectly to claim 1.  Claims 2 and 3 characterize "restraint means" in order to prevent rotation of a cutting pick relative to its mounting socket; claim 4 concerns the spacing of cutting picks along the mounting member, and claim 6 the mounting member itself; claim 5 characterizes the "retention means"; and claims 8 and 9 relate, respectively, to a combination of grader mouldboard, or grader, and a cutting blade assembly as claimed.
Evidence
         The evidence lodged by the opponent in this matter comprises two statutory declarations with attached exhibits.  The first is by Gene Ralph Klett an Engineer employed by the opponent company in the USA for some 26 years.  Mr Klett has spent "the last fifteen years in the development of ground engaging tools" for a range of earth moving equipment.  He states, inter alia,

"I oversee the design, development, and maintenance of the total ground engaging tool product line.  I define, prioritize, and coordinate Ground Engaging Tool New Product Development Program and worldwide ground engaging tool needs.  This includes motor graders, loaders, scrapers, dozers, rippers, excavators, backhoe loaders, and paving products." 

He also states that he is named as an inventor in some 15 US Patents.  In his declaration he refers to ten exhibits, the majority of which comprise copies of US Patent specifications dealing with cutting picks or cutting elements on earth working equipment such as loaders, graders or scrapers.
         The second declaration is by Andrew Wilson Cowie, patent attorney, who exhibits several certificates of the Commissioner of Patents establishing the publication dates in the Australian Patent Office library of numerous US Patents mentioned in the evidence. 
Anticipation
         To support its opposition on the grounds that the invention as claimed is anticipated either due to prior publication or lack of novelty, the opponent has primarily directed attention to five patent specifications forming exhibits to Klett's declaration (exhibits C4 to C8).  These comprise, respectively, US patents 1540314, 2892270, 3312504 and 4108250 and AU patent 227443 all of which were published before the priority date of the present claims.
         The claimed invention is a "cutting blade assembly" which comprises a number of elements, such assembly being "for attachment to the mouldboard of an earth grader".  Thus the blade assembly the subject of the claim merely needs to be suitable for use with a mouldboard of an earth grader.  Mr Fisher submitted that some of the specifications raised as anticipatory documents disclosed devices on earth working equipment other than graders and suggested their unsuitability for attachment to a grader mouldboard.  Whilst there is some credence in that observation, the devices disclosed in exhibit C5, C6 and C7 are either attachable to a grader mouldboard or, in the case of exhibit C7, is mounted on an earthworking device, a scraper, which in operation on the earth has in part a working action closely corresponding to that of a grader.  Mr Fisher however conceded that claim 1 as accepted was anticipated by the disclosure of exhibit C6.
         I see no need to discuss the patent specifications of exhibits C4 to C8 in any detail here.  In my view their disclosures are such as to render the cutting blade assembly as claimed in claim 1 not novel.  To the extent that there are any differences between the devices disclosed in the respective specifications and the invention claimed, I consider that these either involve no inventive ingenuity or concern elements which constitute mechanical equivalents.  For instance, to provide a "hardened metal alloy working face" on the leading surface of the body portion lacks inventive ingenuity given that hard surfacing of working faces of earth working tools has been widely employed for many years.
         I shall now consider the appended claims with respect to anticipation.  Claims 2 to 6 to me are in no better position than claim 1 and in my view also lack novelty, particularly when the disclosure of exhibit C6 is considered.  Claims 8 and 9 similarly lack novelty given my findings on the preceding claims to which they are appended.  However claim 7 is in a different category.
         Claim 7 is an omnibus claim in the following form:

"A cutting blade assembly substantially as hereinbefore described with reference to the accompanying drawings."

This claim is therefore restricted to the specific disclosure of the essential features of the cutting blade assembly as described in the preferred embodiment and as shown in the drawings.  The word "substantially" merely means "in substance" and thus the claim is not necessarily limited to the precise form of an essential feature as illustrated.  Given the particular form of blade assembly described and shown in the drawings and having reviewed the prior art lodged in evidence, I am not satisfied that a patent confined to what is within the scope of claim 7 would be clearly bad for lack of novelty.
Obviousness
         As to the allegation that the invention was obvious, there is little relevant evidence before me to enable any detailed consideration of this ground of opposition.  A consideration of the question of obviousness must be made against the background of the common general general knowledge in the art in Australia at the priority date.  In this case the evidence adduced does not establish the common knowledge in the art.  Disclosures in patent specifications, for instance, can not be treated as part of such common general knowledge unless there is evidence to that effect by persons skilled in the art.  Accordingly, I am unable to consider the obviousness ground further.
Proposed Amendments
As mentioned earlier in this decision, the applicant lodged a request to amend its specification on 17 August 1989. At that time, the applicant provided to the opponent a copy of the request and the proposed amendments. I permitted submissions to be made at the hearing by the parties concerning the amendment proposal. However it should be noted that given the circumstances of the lodgement of the request and the desire of the applicant to have the opposition matter heard promptly, the request had not, at the time of the hearing, been subject to the formal examination provisions of Part VIII of the Patents Act. Accordingly my comments that follow on the proposed amendments should not be taken as being determinative of the request ‑ upon advertisement of the request in accordance with section 81, whether the request is in its present form or includes further proposed amendments, it remains open to any interested person to oppose the request under section 82.
         The amendment proposal is threefold.  Firstly, it proposes a new paragraph for insertion on page 6 of the description of the preferred embodiment.  This paragraph introduces specific reference to the end of the cutting pick opposite the supporting shank and reads thus:

"The operative lower end 21" of body 21 extends rearwardly of lower cutting edge 23' to form a planar ground engaging surface which resists penetration by pick 16 of compacted earth surfaces.  It will be clear to a skilled addressee that with the rearwardly inclined face of body portion 21, the area of the ground engaging face 21" increases as the pick wears through use."

Secondly, the proposal provides an amended claim 1 which differs from the accepted claim by the addition of the following wording at the end of the claim in its definition of the "body portion" of each cutting pick:

"said free end of said body portion extending rearwardly of said cutting edge to form a substantially planar ground engaging surface."

Thirdly, it is proposed to amend several figures of the drawings by correcting the location of a section view and by adding additional references to various areas of the pick as shown.
         Mr Cowie submitted that the wording the subject of the amendment proposed to claim 1 was not clear and unambiguous and that there was no specific disclosure of this feature in the specification as lodged or as accepted.  Precisely in what way the wording was believed unclear was not stated although Mr Cowie suggested that perhaps some definition concerning the angular relationship between the leading surface and the planar ground engaging surface of the free end was needed.
         Mr Fisher however submitted that the proposed amendments merely included by specific reference matter which was within the disclosure of the specification as accepted.  He referred to the discussion of the prior art in the specification, the stated problems experienced with using prior machines to smooth highly compacted earthen roadways without destroying their structural integrity, the aim of the present invention, and also to the drawings.
         With regard to the proposed amendment to page 6 I make the following comments.  I see no difficulty with this proposal.  When the description of the invention in the specification as accepted is fully considered, I believe that a skilled addressee would view the material of this proposal as merely stating explicitly what was otherwise apparent from the original disclosure.  However this proposal draws attention to the definition of the invention in accepted claim 1.  I feel that it is clear from the description that in order for the pick assembly to achieve the result intended on a compacted earthen roadway, the (bottom) planar ground engaging surface of each pick is an important feature.  This feature, if of sufficient area, resists the pick penetrating the earth surface whilst still allowing the transverse straight cutting edge to effect a shaving action on the earth surface.  Accepted claim 1 is silent on any such feature of the invention and consequently lacks fair basis as do those claims appended to claim 1.
         The proposed amendment to accepted claim 1, I feel, goes some way in addressing the deficiency just mentioned and in distinguishing the blade assembly of the present invention from the prior art raised in evidence.  Nevertheless the proposed wording does not exclude cutting picks of sharply pointed profile (as viewed from the side) with a relatively small planar ground engaging surface, a construction which seems unlikely to achieve the result intended for the invention or provide novelty to the assembly of proposed claim 1 over the disclosure of Exhibit C6 of the evidence.
Conclusion
         I have found that all accepted claims except claim 7 lack novelty and that the claims offend against section 40.  Furthermore, the request to amend the specification by the applicant presently on file in my view would not, if allowed, have the effect of removing the above deficiencies.  I therefore afford the applicant an opportunity to propose further amendments to the specification and I allow a period of 60 days from the date of this decision in which to do so.  Any further proposed amendments can be related to the request to amend currently on file.
         On the question of costs, the opponent has been successful in its opposition and accordingly is entitled to its costs.  In my view, the fact that the applicant lodged a request to amend prior to the hearing does not in this case reduce the applicant's liability for the opponent's costs associated with attendance at the hearing.  I therefore award costs up to and including the hearing against the applicant.

(T.R. BRUHN)

Patent attorneys for the applicant: G.R. Cullen & Co, Brisbane