Vermeer Manufacturing Company v Wirtgen GmbH - [2015] APO 14

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Vermeer Manufacturing Company v Wirtgen GmbH [2015] APO 14

Patent Application: 2009212871

Title:Method for determining the wear state

Patent Applicant:  Wirtgen GmbH
Opponent:  Vermeer Manufacturing Company
Delegate:  R Subbarayan
Decision Date:  31 March 2015
Hearing Date:  18 February, in Canberra

Catchwords:  PATENTS – section 59 – opposition to the grant of a patent – determining wear state of milling tools of road surface milling machines and surface miners – lack of novelty established – lack of inventive step over common general knowledge established – claims clear and fairly based – invention fully described – invention is a manner of manufacture – opposition successful – costs awarded against the applicant – opportunity to amend

Representation: Patent applicant: Mr Andrew Fox of Counsel instructed by Dr Andreas Hartmann and Mr Nicholas Stamatiou of Griffith Hack
Opponent: Mr Craig Smith of Counsel instructed by Ms Tracey Hendy of Freehills Patent Attorneys

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2009212871

Title:Method for determining the wear state

Patent Applicant: Wirtgen GmbH
Date of Decision: 31 March 2015
DECISION
The invention as defined in claims 1 to 3, 9, 10 and 25 is not novel and claim 23 lacks an inventive step over prior art document D1. Furthermore the invention defined in claims 1 to 3, 9 to 11 and 23 to 25 lacks an inventive step in light of the common general knowledge.
The claimed invention is clear, fairly based, fully described and a manner of manufacture.
Wirtgen GmbH has 2 months from the date of this decision to propose suitable amendments.
Costs according to schedule 8 awarded against Wirtgen GmbH.
REASONS FOR DECISION
BACKGROUND

Patent application 2009212871 in the name of Wirtgen GmbH was filed on 31 August 2009 and claims priority from priority application DE 102008045470.2 filed on 3 September 2008. It was advertised as accepted on 27 September 2012. Vermeer Manufacturing Company filed a Notice of Opposition to the grant of the patent under s59 of the Patents Act on 24 December 2012. The evidentiary stages were completed on 11 August 2014 and the matter was heard in Canberra on 18 February 2015.
GROUNDS OF OPPOSITION
The Statement of Grounds and Particulars filed on 22 March 2013 states that the application is being opposed under the grounds of manner of manufacture, novelty, inventive step, utility, clarity, fair basis and full description.
EVIDENCE
Evidence in Support filed by the opponent comprises:
(i) Statutory declaration of David O’Sullivan, together with Annexures “DO-1” to “DO-11”, declared 25 July 2013 (O’Sullivan);
(ii) Statutory declaration of Mark Petrie, together with Annexures “MP-1” to “MP-9”, declared 28 August 2013 (Petrie #1);
(iii) Statutory declaration of Mark Petrie, together with Annexures “MP-1” to “MP-2”, declared 29 November 2013 (Petrie #2);
(iv) Statutory declaration of Ngaire Pettit-Young, together with Annexure “NPY-1”, declared 6 December 2013 (Pettit-Young #1);
(v) Statutory declaration of Dmitry Przhedetsky, together with Annexures “DP-1” to “DP-9”, declared 10 December 2013 (Przhedetsky #1); and
(vi) Statutory declaration of Tracey Joan Hendy, together with Annexures “TJH-1” to “TJH-15”, declared 11 December 2013 (Hendy).
Evidence in answer filed by the applicant comprises:
(i) Statutory declaration of Gene Ralph Klett, together with Annexures “GRK-1” to “GRK-2”, declared 9 May 2014 (Klett);
(ii) Statutory declaration of David Mendelawitz declared 12 May 2014 (Mendelawitz);
(iv) Statutory declaration of Eduardo Mario Nebot, together with Annexures “EMN-1” to “EMN-3”, declared 13 May 2014 (Nebot); and
(iv) Statutory declaration of Greg Ellis declared 13 May 2014 2013 (Ellis).
Evidence in Reply filed by the opponent comprises:
(i) Statutory declaration of Ngaire Pettit-Young, together with Annexure “NPY-1”, declared 11 July 2014 (Pettit-Young #2);
(ii) Statutory declaration of Rory Anderson, together with Annexures “RA-1” to “RA-2”, declared 29 July 2014 (Anderson);
(iii) Statutory declaration of Mark Petrie, together with Annexures “MP-10” to “MP-13”, declared 1 August 2014 (Petrie #3);
(iv) Statutory declaration of Dmitry Przhedetsky, together with Annexures “DP-10” to “DP-23”, declared 4 August 2014 (Przhedetsky #2); and
(v) Statutory declaration of Jason Manakis, together with Annexures “JCM- 1” to “JCM-6”, declared 4 August 2014 (Manakis).
SPECIFICATION
The specification relates to a method of determining the wear state of milling tools of a road surface milling machine or a surface miner. Road surface milling machines and surface miners are machines that use a plurality of milling tools mounted on a rotating milling roller to strip road surfaces and remove mineral deposits respectively. The specification refers to these milling tools as milling chisels and these are mounted in respective chisel holders that are either bolted or welded to the milling roller.
The specification states that the milling chisels are “subject to continuous wear” and when a certain wear state is reached, “it is advisable to replace them since otherwise, the efficiency of the remainder of the process decreases” and further “worn and/or broken chisels can lead to secondary damage to the chisel holders and worn chisel holders can lead to secondary damage to the milling roller”. It also then identifies the different states of wear as including (i) wear of the hardened chisel tip, (ii) wear of the chisel holder, (iii) non-rotationally symmetrical wear on the chisel tip, chisel head and chisel holder and (iv) chisel breakage.
The specification then discusses the importance of replacing the chisels at the right time.
“A prompt replacement of the chisels and/or chisel holders is therefore necessary and reduces costs. By contrast, it is likewise not optimal from a cost standpoint for the chisels and/or chisel holders to be replaced too early because the chisels and chisel holders, as wearing parts, are very cost-intensive. This results in failure to properly utilize remaining wear potential”.
This is then followed by an explanation of the current practice for determining the wear state of the chisels and chisel holders and the drawbacks with this practice.
“Up to now, the wear state of chisels and chisel holders has been ascertained through visual inspection by the machine driver. In order to do so, the machine driver must shut down the machine (switch off the engine and decouple the roller from the drive train). The driver must then open the rear roller flap in order to visually inspect the milling roller. The milling roller is then rotated by means of a second drive unit in order to permit inspection of the entire milling roller. The task of roller inspection can also be performed by a second operator. In this case, the wear state of the chisel holders is usually determined by means of so-called wear markings. The wear state of the chisels is determined by means of longitudinal wear and the rotational symmetry of the wear pattern”.
“Inspecting the wear state of the chisels and holders is very time-consuming and is also unproductive since no production can take place during this time. The entire process is interrupted, thus additionally reducing availability. Furthermore, due to the fact that the assessment is very prone to subjectivity, there is the risk of failure to optimally utilize the wear potential of the holders and chisels”.
It then briefly discusses two prior patent specifications, namely DE 10203732 and AT 382683, which have attempted to address this problem. In the former, the wear state is assessed by evaluating various machine parameters and in the latter, photoelectric detectors are used to detect the presence of the chisels. Neither of them provides quantitative information on the wear of the chisels.
The specification states that it would be advantageous if a method could be provided by which it is possible to carry out a quantitative wear detection.
This is then followed by a consistory clause which mirrors claim 1 and a detailed description of certain preferred embodiments of the present invention.
The invention broadly resides in a method which involves measuring the values of one or more coordinates of one or more points on the surface of the chisel using some kind of an automated device and then comparing these values with corresponding reference values stored in a system memory to provide quantitative information of the wear that has occurred on that chisel. For example a position value representing the distance of the tip of the chisel from a fixed point such as the axis of the milling roller or the surface of the milling roller is measured using an optical measuring device and this value is then compared with a reference value representing the distance of the tip of a new chisel from the same fixed point. This comparison yields quantitative information of the wear of the chisel tip which is then used to determine whether the chisel tip has worn out to an extent where the chisel requires replacement.
In some of the described embodiments the position values are measured for a number of points on the outer surface of the chisel head to provide a contour of the worn chisel head. This contour can then be compared with the contour of a new chisel head to provide information on the wear of various points on the outer surface of the chisel head including any asymmetrical wear. This information can also be used to determine the wear volume of the chisel. Such information can be useful in identifying chisel heads that are still of sufficient length at the tip but because of wear on the other portions of the head can no longer be used for fine milling work.
Along with the measurement of the position values, the rotational or angular position of the milling roller that supports a number of chisels can also be determined and this information can then be used to identify the specific chisel on the roller that needs replacement.
In a preferred embodiment the optical device for measuring the wear state comprises a light source such as a laser and a camera that are associated with the milling roller. The roller surface is illuminated with light from a line laser. The laser line produced is observed by a camera at a different angle, as a result of which height differences on the roller surfaces caused by the chisels produce shifts in the projected laser lines. Comparing this with a known differential angle between the light source and the camera, the height coordinates of various points on the roller surface including those of the chisels can be calculated.
The specification ends with 26 claims with claim 1 and omnibus claim 26 being the only independent claims.
Claim 1 reads as follows:
A method for determining a wear state of a milling tool of a road surface milling machine, a mining machine or a surface miner, the milling tool comprising a plurality of chisel holder replacement systems, each of the chisel holder replacement systems being equipped with a chisel holder and a chisel, the method comprising the steps of:
determining a position value associated with a position of at least one point of at least one chisel and/or at least one chisel holder by means of a measurement method; and
comparing the determined position value to at least one reference value stored in a memory device such that a result of the comparison is indicative of quantitative Information associated with the wear state of the milling tool of the road surface milling machine, the mining machine or the surface miner.
ONUS OF PROOF
The examination request for this patent application was filed on 23 September 2009. As a consequence, substantive amendments of the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act2012 do not apply to the present application. This includes the amendment to subsection 60 (3A) that allows the Commissioner to refuse a patent application if satisfied on the balance of probabilities that a ground of opposition exists.
Consequently the former standard for opposition proceedings applies and the opponent must establish that it is clear or practically certain that the patent is invalid (F Hoffman La Roche AG v New England Biolabs Inc [2000] FCA 283 at [29], [67]; [2000] FCA 283; 50 IPR 305 at 311, 319; Commissioner of Patents v Sherman [2008] FCAFC 182 at [18], [22]; [2008] FCAFC 182; 79 IPR 426; Genetics Institute Inc v Kirin-Amgen Inc [1999] FCA 742; [1999] 92 FCR 106 at [17]).
NOVELTY
It is well established that the general test for lack of novelty is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20]; 137 CLR 228 at 235:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement”.
This test is satisfied if the alleged anticipation discloses all the essential features of the invention as claimed (see Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40; (1990) 91 ALR 513 at 517). In order to meet this requirement, the prior art must "contain clear and unmistakeable directions to do what the patentee claims to have invented" (The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 at 486).
In AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99, the full Federal Court held:
“Sufficiency of disclosure is a cardinal anterior requirement in the analysis of whether a prior art document anticipates a claimed invention. It is only after the stage of assessing the sufficiency of disclosure – which involves a determination about whether a prior document has “planted the flag” as opposed to having provided merely “a signpost, however clear, upon the road” or, perhaps, something less – that the notion of reverse infringement comes into play as the final and resolving step of the required analysis. It is not the first step of the required analysis; nor is it the only step”.
In relation to the specificity required in order for a prior art document to anticipate the claimed invention, the full court in AstraZeneca (supra) also quoted with approval the following quote from Gyles J in Apotex Pty Ltd and Another v Sanofi-Aventisand Another (2008) 78 IPR 485:
“anticipation is deadly but requires the accuracy of a sniper, not the firing of a 12 gauge shotgun”.
The opponent relied on two prior art documents each of which they asserted destroyed the novelty of the claimed invention.
D1: US 6990390 (Groth)
This document is titled “Method and apparatus to detect change in work tool”. It states that many work machines have work tools with engaging portions that may wear or become disengaged from the work machine so that work machine can no longer perform its function properly. Examples of work machines mentioned are excavators with buckets having attachable teeth, cold planers having a rotor with attachable teeth, soil compactors, bulldozers including rippers with ripper teeth or agricultural tractors with tillage tools such as chisels. It is not in dispute that the term “cold planer” is another name for a “road surface milling machine”. While the preferred embodiments of this document are primarily described with reference to excavator buckets, the specification also includes a number of references as to how the invention can be applied to cold planers and I will refer to some of these references as appropriate.
D1 states that operators of these work machines have to visually check the work tools to see whether they have become detached or have worn out to such an extent that they need to be replaced and that it seeks to provide an apparatus and method that overcomes these disadvantages. For example it states “the rotor on a cold planer may have to be manually inspected at the end of each shift or scythes on a combine may need to be periodically inspected”.
The apparatus of D1 comprises a sensor 12 and a control system 14 that are mounted on the work machine that has one or more engaging portions for interacting with a work environment. The sensor 12 senses an existing predetermined relationship 26 between one or more engaging portions of the work tool 16 to at least one of the work tool 10 and another engaging portion of the work tool 16 and relays information indicative of the existing predetermined relationship 26 to the control system 14. For example “the work tool 10 may be a rotor on a cold planer, and the engaging portion 16 of the rotor may be eight rows of twelve protrusions, spaced five inches apart. The predetermined relationship in this example may be the distance the protrusions protrude”. Although D1 does not use the term “chisel” to refer to the protrusions in the cold planer, I am satisfied from the evidence that the protrusions or work tools in a cold planer are called ‘chisels’ or ‘picks’. Similarly while D1 does not specifically refer to chisel holders, it is clear from the evidence that the chisels in a cold planer are invariably mounted to the milling roller through chisel holders (paragraph 6.2 of the O’Sullivan; paragraph 5.15 of the Petrie #1; paragraph 11.7 of Przhedetsky # 1 and paragraph 4.33 of Klett). The integer of chisel holder replacement systems having a chisel holder and a chisel is therefore inherently disclosed for the cold planers in D1.
The control system has a memory 18 that stores a desired predetermined relationship 20 and a predetermined value 22. In relation to a cold planer it states “if the work tool 10 is a rotor on a cold planer, the engaging portion 16 of the rotor is eight rows of twelve protrusions, spaced five inches apart and the predetermined relationship is the distance the protrusions protrude, the control system 14 may store the desired relationship 20 of the protrusions all protruding a distance of six inches from the rotor surface” and “may store the predetermined value 22 of one half inch”.
The control system compares the sensed existing predetermined relationship with this desired predetermined relationship and generates an error signal if the change in the predetermined relationship exceeds the predetermined value. In relation to cold planer it states “If there is no wear on the protrusions, the control system 14 may receive information indicative of the existing predetermined relationship 26 of the protrusions all protruding a distance of six inches from the rotor surface” and “If there is a change of more than one half inch in the distance any protrusion protrudes from the rotor surface between the desired relationship 20 and the existing relationship, the control system 14 will produce an error signal 24”.
The error signal may be used to produce an audible or visible alarm or connected to a visual display for the operator of the work machine.
Although the applicant submitted that the teaching of D1 is primarily in relation to excavator buckets and that it lacks sufficient disclosure as to how its teachings can be applied to cold planers, I am satisfied that the relevant disclosures in relation to cold planers that I have referred to in the preceding paragraphs do provide sufficient detail to perform the invention on cold planers.
The applicant further submitted that in D1 only the distance the engaging portions protrude from the roller is measured and this is not the same as determining the “wear state” which in the opposed application, is clearly more than just the wear of the tip (the distance the tip protrudes from the roller).
However I am not convinced with this argument. While the opposed application describes embodiments in which position values of multiple points are determined to establish the contour of the chisel in a worn state, claim 1, which defines the invention in its broadest form only requires determining the position value for one point on the chisel. This, according to the description, could be the tip of the chisel. In D1 the sensor generates information as to the distance the tips of the chisels (protrusions) protrude from the rotor and this is then used to determine whether the chisel tips have worn out to such an extent where the chisels need to be replaced. In my view the wear of the tip of the chisel is indicative of a wear state of the chisel.

The applicant further asserted that the chisel holders in D1 are not replaceable. I find this argument a bit strange given that purpose of the invention of D1 is to identify when the ground engaging tools need to be replaced. Anyway D1 clearly states “a cold planer may have a rotor with attachable teeth used to break up pavement”.
The applicant was also of the view that the D1 does not disclose the integer of “comparing the determined position value to at least one reference value stored in a memory device” and again referred to the disclosure in relation to the excavator bucket embodiments of D1 in support of this contention. However I have earlier identified several passages in D1 where it describes obtaining position values of the protrusion of the chisel and comparing that with a desired predetermined value that is stored in a memory 18. This integer of claim 1 is disclosed in D1.
I also do not agree with the applicant’s submission that the result of the comparison of D1 is not indicative of quantitative information. In D1 the determination of the distance the chisels of the cold planer protrude is clearly quantitative information and this is again compared with a stored desired predetermined value which is again quantitative information. It follows that the error signal produced as a consequence of this comparison is also quantitative information. The fact that this signal is used to provide an audible or visible alarm does not then make it non-quantitative.
In my view all of the integers of claim 1 are disclosed in D1 and there are enough references in D1 in relation to how its teachings can be applied to a cold planer which, as I have mentioned earlier, is another term for a road milling machine. Therefore there are also clear and unmistakeable directions in D1 to arrive at the invention of claim 1 as it applies to a road surface milling machine. Claim 1 is therefore not novel.
The opponent also submitted that the integers of dependent claims 2, 3, 8, 9, 10 and 25 are also disclosed in D1 and that these claims are also therefore not novel.
Claim 2 requires that a contactless measurement method is used to determine the position value. D1 discloses a laser scanner which is clearly a contactless measurement method to determine the protrusion value of the chisels. This claim is therefore not novel.
Claim 3 requires that a position of a chisel tip is used as a position value and the applicant argued that D1 only teaches calculating the distance the protrusions protrude from the roller and that this is not the same as determining the position value of the tip. I disagree. D1 clearly teaches determining how much the tip of a protrusion protrudes from the rotor, e.g. 6 inches, and in my view this is determining a position value of the tip. This integer is disclosed and claim 3 is therefore not novel.
Claim 8 requires that at least one point of the chisel or chisel holder in an unworn new state is determined in order to establish the reference value. I interpret this as requiring that the measuring device that is used to determine the position value of the worn chisel is also initially used to determine the position values of one or more points on an unworn new chisel to establish the reference values. While there is a reference in D1 to storing reference values, there is no clear and unmistakeable teaching in D1 to use the on-board measuring device to measure and establish the stored reference values. Claim 8 is therefore novel.
Claim 9 requires that a tool parameter is stored as a reference value. D1 teaches the stored desired predetermined value can be the distance the protrusions protrude. This is clearly a tool parameter. Claim 9 is therefore not novel.
Claim 10 requires that the reference or position values are determined in a worn state. D1 clearly does this. Claim 10 is therefore not novel.
Claim 25 defines an apparatus for carrying out the method of any one of claims 1 to 24. The claim does not explicitly define any physical integers of the apparatus, I am prepared to accept that this claim can be construed broadly as having one or more means that can carry out the different steps of the method of claim 1. Clearly D1 teaches an apparatus for carrying out its method which I have found anticipates claim 1. It follows that claim 25 is not novel.
In summary claims 1 to 3, 9, 10 and 25 are not novel in light of D1.
D3: JP 9-41863 (Okamura)
The opponent provided a verified translation of this Japanese document as part of their evidence in support. Document D3 states that it relates to a roller bit wear detection device for a tunnel boring machine (TBM).
D3 discloses a TBM with a cutter head 2 having multiple roller bits 4 mounted in the circumferential direction and a cutter plate 3 which is rotated by a drive system. Due to the rotation of the cutter plate, the roller bits roll circumferentially over the surface of the rock, causing the replaceable carbide tip 19 embedded in the roller bit to crush the rock. The carbide tip needs to be replaced if it has become worn by more than a predetermined amount. The amount of wear is determined by periodically stopping the TBM and visually assessing the carbide tip. This is time consuming, requires stoppage of the excavation and can lead to damage to the hub before the next inspection. The solution taught in D3 is to provide a roller bit wear detection device that can accurately detect the state of wear of the roller bit while excavating a tunnel.
The device comprises a laser generator 22 and a camera 23. While a tunnel is being excavated, the circumferential surface of the roller bit containing the carbide tip is irradiated in the radial direction of the roller bit by laser light from the laser generator. Doing this causes a bright line representing the cross-sectional contour of the roller bit to appear on the circumferential surface of the roller bit. This bright line is picked up by the camera and inputted into an image processing unit 31 and subjected to binarization to obtain image data for a contour line representing the cross-sectional contour of the roller bit. A wear assessment unit 34 then converts the current contour line into a coordinate sequence and determines the divergence from the coordinate sequence of a contour line representing the allowable wear range, which is stored in advance in storage unit 35. The contour line images are also overlaid and displayed on monitor 33. Once the roller bit has reached the wear limit, a message to that effect is displayed on the monitor and a warning lamp is also illuminated.
Although D3 does not relate to a road milling machine or a surface miner, it falls within the broad category of a mining machine which is also included in claim 1. The evidence also shows that the roller bits could be considered as milling tools. I am also satisfied that the disclosure of converting the contour line into a coordinate sequence is a clear reference to determining a position value associated with at least one point on the tool and this is then compared with a reference value stored in a memory device. In my view the determination of the divergence from the allowable wear range is clearly indicative of quantitative information and not qualitative information as argued by the applicant.
What is however not disclosed is the milling tool comprising a chisel holder and a chisel. Mr Klett for the applicant states that he would not consider a roller cutter/bit as a chisel. Mr Petrie for the opponent also states “Whilst I generally would not view a roller cutter as a chisel by virtue of the rolling and crushing action, it arguably works via the same action”. In my view, the roller bits in D3 do not operate with the same milling action as the chisels in the claimed invention and hence cannot be termed as chisels. This integer of claim 1 is therefore not disclosed in D3.
It therefore follows that claims 1-26 are novel over D3.
Common General Knowledge
The opponent also ran the argument that claim 1 is not novel over the common general knowledge of the operator visually checking the chisels to form a view as to whether one or more of the chisels had worn to such an extent that they needed to be replaced. They submitted that forming a view as to the extent of wear necessarily involves a mental measurement and comparison with a reference value that is stored in the person’s brain or in the machine’s technical manual and that that comparison is indicative of quantitative information associated with the wear state of the chisel.
Although it was run as a lack of novelty over common general knowledge, it became apparent that the opponent was basically asserting the claimed invention lacked novelty over the prior use of visual inspection of the milling tool. While it is an interesting argument, I agree with the applicant that a sensible reading of the opposed application clearly indicates that the invention relates to the automated monitoring of the wear of the milling tools in a road milling machine or a surface miner. The claimed invention is all about providing a solution to the problems associated with the prior art method of visual assessment of the wear. I am not convinced the scope of the integers of claim 1 includes a manual measurement of the position value and that the memory device can be a human brain or an operator’s handbook.
In my view the prior use of visual inspection does not anticipate the claimed invention. This attack on the novelty of the claimed invention therefore fails.
INVENTIVE STEP
Subsection 7(2) of the Act states that an invention is taken to involve an inventive step unless it would have been obvious to a person skilled in the art in the light of the common general knowledge, considered alone or together with the prior art. A document is prior art for this purpose if "a skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded [the document] as relevant" (s 7(3)).
The test for whether an invention is obvious is whether it would have been a matter of routine to proceed to the claimed invention. In Wellcome Foundation Ltd v V.R. Laboratories (Aust.) Pty Ltd [1981] HCA 12 at [45], 148 CLR 262 at 286 Aickin J stated:
"The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not."
The High Court in Aktiebolaget Hässle v Alphapharm Pty Ltd (‘Alphapharm’) [2002] HCA 59 at [51]- [53]; [2002] HCA 59; 212 CLR 411 at [51]- [53] approved this approach, in addition to that taken in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157 at 187 in which Graham J had posed the question:
“Would the notional research group at the relevant date in all the circumstances directly be led as a matter of course to try [the claimed invention] in the expectation that it might well produce a useful [desired result]?”
The usual approach to determining inventive step is the problem-solution approach. Once the problem has been formulated and the common general knowledge and the prior art base has been determined, the question of whether the claimed solution is obvious must be addressed.
Problem to be addressed
As discussed earlier the specification when discussing the existing practice of visual inspection of the chisels states “Inspecting the wear state of the chisels and holders is very time-consuming and is also unproductive since no production can take place during this time. The entire process is interrupted, thus additionally reducing availability. Furthermore, due to the fact that the assessment is very prone to subjectivity, there is the risk of failure to optimally utilize the wear potential of the holders and chisels”. In my view this is a statement of the problems that the claimed invention seeks to address.
Mr O’Sullivan states in his declaration that he was well aware of the problems caused by tool breakage and the delays resulting from the need to regularly check for tool wear in road surface millling machines. Mr Klett also accepts that there was a recognition of the delays caused by the need for checking for tool wear although in his view the delays were “not necessarily seen as a ‘problem’ but as an operational issue and ‘necessary step’ in the prevention of damage to the tool holders. Whether it is considered a problem or an operational issue, I am satisfied that it was well recognised in the art that visual inspection for tool wear and breakage would require downtime of the machinery.
I am therefore satisfied that the problem of machine downtime caused by the need for regular visual inspection can be used as the starting point for assessing whether the claimed invention is inventive in line with the Full Federal Court decision in AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99.
Person Skilled in the Art (PSA)
The parties had differing opinions on who is the PSA in the field of the claimed invention. The applicant went to great lengths, both in their evidence and in their submissions at the hearing, to argue that surface miners are very different to road surface milling machines and consequently the PSA in the art of road milling machines would not be aware of the common general knowledge relating to surface miners and vice versa.
The opponent argued that surface miners have been adapted from road surface milling machines and that the principles of operation of the two machines are very similar and that a PSA of road milling machines would also have a good understanding of the common general knowledge in relation to surface miners.
In my view this difference in views of the parties does not need to be resolved. The claimed invention is directed to determining the wear state of milling tools in either one of these two types of milling machines and as the common general knowledge in Australia in relation to road milling machines has been established by the evidence, in my view that is sufficient to make a determination on inventive step.
The applicant submitted that the PSA is a person who has, through his/her experience in the field, gained an intimate knowledge of how road profilers work, and the difficulties that confront operators of such machinery in the course of their day-to-day use and would typically be an operations or maintenance manager at a business which utilises this type of machinery. The opponent on the other hand argued that the PSA is someone who has a practical interest in road profilers and surface miners and would also include a designer of such machines in addition to an operations or maintenance manager. I am inclined to agree with the opponent.
The person skilled in the art or the skilled addressee is someone “skillful and well acquainted with a trade” – Philpott v Hambury (1885) 2 RPC 33. In Root Quality v Root Control Technologies Pty Ltd (2000) 49 IPR 225 at [70-71]) Finkelstein J stated that the skilled addressee would be:
“those likely to have a practical interest in the subject matter of the invention. A variety of people may have that interest. There are those who might wish to make or construct the invention, those who may wish to compound the invention and those who may wish to use the invention”.
Mr O’Sullivan is a civil engineer with experience in construction, excavation, road building and tunnelling. He is currently director/co-owner of Pentagon Pacific Pty Ltd which provides equipment and consulting services to the Australian and New Zealand tunnelling and mining industries. In these roles he states that he has acquired a good knowledge of road profiling machines, tunnelling machines and milling machines with rotary cutters in general.
Mr Petrie has a degree in mechanical engineering and worked for over 16 years in the heavy mobile equipment industry, both as a Senior Engineer and currently as a director with CMP Engineers. In these capacities he has been involved in the development of cutter designs for a mobile miner, field testing of mining and other machinery and design of mining trucks. He has had exposure to road profilers, tunnel boring machines, salt harvesters and road headers. He also states that he is familiar with various sensing techniques including laser sensing and measurement that are employed in some of these machines.
Mr Przhedetsky is a mining engineer with considerable experience in the mining industry in both Russia and Australia. He is also a former employee of Wirtgen Australia, having worked as the Business Development Manager from 2002-2007. In this capacity he was responsible for implementing the introduction of Wirtgen surface miners in Australia. He states that he has acquired a thorough understanding of surface miners through regular training at Wirtgen as well as experience in the mining sites.
Mr Klett has a degree in agricultural engineering and almost 50 years experience with Caterpillar Inc. designing and developing ground engaging tools for a range of earthmoving machinery including surface miners and road surface milling machines. During this time as part of his role he has regularly visited customer sites in Australia in order to understand their needs and the inspection of product problems and faults.
Professor Nebot is an electrical engineer with a PhD in robotics and has worked since 1992 with the University of Sydney. He was a Professor of Mechatronics from 2002-2004 and currently the Patrick Chair of Automation and Logistics. He has also been simultaneously employed by various mining companies such as CRC Mining and Acumine Pty Ltd to lead some of their automation programs. He states that over the course of his professional career he has gained exposure to various types of sensing technology for mining and road working machinery.
Mr Ellis has a diploma in automotive engineering with 25 years experience in the road profiling industry that includes an eight year stint with Wirtgen Australia from 1989 to 1997.
It is clear from their respective qualifications and experience that Mr O’Sullivan, Mr Petrie, Mr Przhedetsky, Mr Klett and Mr Ellis are all well acquainted with and have a practical interest in road profilers, with Mr Przhedetsky and Mr Klett also being well acquainted with surface miners and Mr O’Sullivan and Mr Petrie also being well acquainted with tunnel boring machines. I am therefore satisfied that each of them could be considered as a skilled addressee who is aware of the common general knowledge in relation to road surface milling machines. Professor Nebot’s expertise however is in the field of sensors and automation for mining equipment and machinery and not in the design or operations of road profilers or surface miners.
D1: US 6990390 (Groth)
D1 is the only prior art document relied upon by the opponent for lack of inventive step. In order to use this document to assess the inventive step of some of the dependent claims, I need to establish whether D1 is a document that the PSA would have ascertained, understood and regarded as relevant as required by s7(3) of the Patents Act.
The applicant submitted that the evidence does not establish that the PSA of road milling machines would have searched patent documents and even if they had and ascertained D1, its relevance is very limited.
In Commissioner of Patents v Emperor Sports Pty Ltd [2006] FCAFC 26, the Full Court affirmed the general correctness of the approach that it could be reasonably expected that the person skilled in the art would conduct a search of the patent literature, including the patent specifications of major countries except where it would not be reasonable to have such an expectation.
Mr O’Sullivan has stated that when he was involved in the development of two new products, his company engaged patent attorneys to conduct a patent search before patent applications were filed. Mr Petrie has also stated that patent searches can be important as part of product design to avoid infringement and that he also looked up old patents in order to gain more information about known mechanisms. Mr Klett does not provide any evidence on this issue. Although Professor Nebot is of the view that the PSA in his field would not ordinarily review or consider patent documents when developing a new product or system, I note that his expertise is in the field of sensing technology for mining machinery and not in the design or operations of road milling machines.

I am satisfied that the person skilled in the art would have searched patent documents. I have also noted earlier that D1 discusses the problem of machinery downtime when discussing cold planers. Furthermore its title would also suggest that it is relevant to the stated problem. I am therefore of the view that D1 is a document that the PSA would have ascertained, understood and regarded as relevant to solving the problem.
I have earlier found that claims 1, 2, 3, 9, 10 and 25 lack novelty over D1. It therefore follows that these claims also lack an inventive step. It has been further asserted by the opponent that dependent claims 4 and 23 also lack an inventive step over D1.
Claim 4 requires that “one additional point of the chisel that is subject to only slight wear or no wear at all is established as a position value and the chisel wear is determined based on the difference between these two position values”.
In D1, the chisel wear is determined by determining the distance of the tip of the chisel from the surface of the rotor which is clearly a point of no wear. Although the opponent submitted that it is obvious to select a low wear point on the chisel in light of this teaching in D1, I am not convinced. I have been provided with no evidence as to why the PSA would be motivated to choose a point of low wear or no wear on the chisel when the chisel is a replaceable part on the milling roller and is also susceptible to breakage. Claim 4 is inventive.
Claim 23 requires that “the rotational position of a milling roller that supports the chisel, chisel holder, and/or chisel holder replacement system is determined”. Mr Petrie states that if there were more than one chisel for a given longitudinal position on the roller, to determine the position of a chisel one method would be to use an absolute position rotational sensor and that such type of sensors were well known at the priority date. This has not disputed by the applicant’s experts other than to say that D1 does not suggest the use of a rotational position sensor. Whilst that may be true, I note that Mr Klett accepts that cold planers will invariably have more than one chisel for any given longitudinal position. Given that, there obviously needs to be some means to identify which one of the chisels for any given longitudinal position is being measured by the optical system. Mr Petrie asserts that determining the rotational position of the roller would be the obvious solution to take without having read the opposed patent specification. I have been provided with no evidence from the applicant as to what other methods could have been employed to identify the specific chisel and why the rotational angle detection is not the obvious solution it is asserted to be. I am satisfied that the inclusion of a rotational position sensor in a road milling machine would have been an obvious thing to do. Claim 23 lacks an inventive step over D1.
Obvious over Common General Knowledge
The opponent also submitted that claims 1, 2, 3, 4, 8 to 11 and 23 to 25 lack an inventive step over the common general knowledge in the art in relation to the existing practice of visual inspection of the chisels and the use of laser based systems for measuring distances.
It is not in dispute that the following were common general knowledge in the art of road milling machines:
- The state of wear of chisels on road surface milling machines and surface miners had to be regularly inspected visually to avoid damage to the tool holders and milling drum as well as achieving satisfactory milling performance.
- Visual inspection involved the operator inspecting the chisels to form a view as to whether they had worn to such an extent that they needed to be replaced.
- Forming a view involved a mental measurement and comparison with a reference value that is stored either in the operator’s brain or in an operator’s manual.
- The process of inspecting the chisels involved downtime as the machine had to be stopped to carry out the inspection.
I have earlier found that this downtime of the road surface milling machines and surface miners is a problem that the claimed invention is directed to solving and is one that can be used as a starting point to assess inventive step.
When the invention in its broadest form as defined in claim 1 is compared with this existing practice of visual checking of the wear state of the chisel and chisel holders, in my view it is clear that what the claimed invention seeks to do is to automate what was previously done manually by an operator of the machine. The integer “determining a position value associated with a position of at least one point of at least one chisel” defines no more than an automated way of determining the distance of at least one point on the chisel, which could include the chisel tip, from some reference point and similarly the integer “comparing the determined position value to at least one reference value stored in a memory device” defines no more than an automated way of comparing the determined distance with a reference value.
In response to the question posed to them as to how they would solve the stated problem based on the common general knowledge as it existed at the priority date of the claimed invention both Mr Petrie and Mr O’Sullivan have clearly stated in their respective declarations that an automated system that uses some sort of sensor to measure the length of the chisel and comparing it with a reference value would have been an obvious solution and that such a sensor could be an optical sensor such as a laser (O’Sullivan paragraph 7.14 and Petrie #1 paragraphs 5.21 to 5.26). Mr Petrie in fact states that “the idea of using sensor technology to take the necessary measurement, e.g. of the length of the cutter and comparing that measurement to a reference value was ‘beyond obvious’”.
Although Mr Klett for the applicant states that the machinery downtime was not a problem and there was no motivation to move away from the existing visual inspection system, he also states that “if it was accepted that such a 'problem' did exist as at September 2008 and there was a motivation to 'solve' it (neither of which I believe arose at September 2008), then, hypothetically speaking, it is theoretically possible that the development of a laser based measurement system might have been investigated” (paragraph 4.64 of Klett). He does however further add that such a laser based system would be difficult to implement on road milling machines and surface miners due to the dust and debris that is flung about as the machine operates and that placement of laser systems in such hazardous conditions would be difficult and that significant research and development work would be required. These implementation difficulties expressed by Mr Klett are also echoed by Professor Nebot.
While what Mr Klett and Professor Nebot state in terms of the practical difficulties may be true, the fact is that the opposed specification does not recognise these as significant problems and merely states that “during the milling process, the measurement system is suitably stowed in a corresponding protective device during phases in which no measurement is performed” which in my view is the logical thing to do. There is no further discussion on where the lasers are positioned, any other practical difficulties in implementing lasers for the plurality of chisels that are typically found on the milling rotors of road milling machines or surface miners or how it overcomes such practical difficulties. In the absence of such discussion, I see the claimed invention as no more than mere automation of a manual process with little regard to any practical difficulties in implementing such an automated solution. Therefore I am not convinced that any such practical difficulties should be a consideration in assessing the inventive step of the claimed invention.
It has not been disputed by the applicant that automated length measurement systems such as laser based systems were well known at the priority date. However they submitted that Mr Klett had stated that there were other solutions like better scheduling of inspections, better training of machine operators in operating the machines and improving the quality of the chisels that he would have explored rather than use sensors to determine chisel wear or breakage. The fact that other solutions were possible does not mean that the hypothetical addressee would not have been led to try an automated system. Both Mr Petrie and Mr O’Sullivan are of the view that this is an obvious solution. I note that even Mr Klett has accepted that it is theoretically possible that a laser based solution could have been investigated. Based on the evidence I am satisfied that the hypothetical addressee faced with the problem of machine downtime caused by the need to visually check the chisels and chisel holders would have been led as a matter of course to try an automated system in the expectation that it might well reduce the need to regularly stop the machines in order to visually check the chisels.
Claim 1 lacks an inventive step over the common general knowledge in the art.
A laser based system is clearly a contactless optical measurement method and the use of the chisel tip as the position value is again well known in the prior art method of visual inspection. Therefore claims 2 and 3 also lack an inventive step.
Claim 4 requires that “at least one additional point of the chisel that is subject to only slight wear or no wear at all is established as a position value”. While during visual inspection the distance of the tip from the surface of the roller is estimated I am not convinced that choosing another point on the chisel that is subject to little or no wear would have also been an obvious point to measure and use as a reference as asserted by the opponent. Claim 4 is inventive.
For similar reasons I am not convinced that the integer of “at least one point of the chisel, chisel holder, and/or chisel holder replacement system in an unworn, new state is determined in order to establish the reference value” is obvious. Claim 8 is inventive.
Claim 9 requires that “a tool parameter is stored or is storable as a reference value”. In my view, it goes without saying that the reference value that the determined position value will be compared with will be a tool parameter. Claim 9 therefore lacks an inventive step.
Claim 10 requires that “the reference value and/or the position value is/are determined in a worn or partially worn state”. The determination of the position value of the chisel tip is obviously measured in a worn state. Claim 10 therefore lacks an inventive step.
Claim 11 requires that “the position value is correlated with a wear parameter as a reference value by means of a characteristic field or a functional correlation”. The opponent argued that it is obvious to perform mathematical correlations in order to make deductions about the degree of wear a chisel. I agree that this would be inherent in any such measurement of the degree of wear. Claim 11 therefore lacks an inventive step.
Claims 23 and 24 require the determination of the rotational position of the milling roller and correlate the position value and the reference value to determine the wear state of the milling tool. Although not defined as such in the claims it is clear from the description that the determination of the rotational position is for the purpose of identifying the location of the particular chisel that has been measured. Mr Petrie has stated that the use of a rotational position sensor to sense the angular position of the milling roller and then correlating both the position and reference values to this angular position is an obvious solution to identify the exact chisel amongst the many that are present on the milling roller. These claims therefore lack an inventive step.

100. Claim 25 is an apparatus for carrying out the method of claim 1. As the method of claim 1 is not inventive, the apparatus for performing it without any further elaboration of what physical integers it possesses would also be not inventive. Claim 25 therefore lacks an inventive step.
101. In summary the invention defined in claims 1 to 3, 9 to 11 and 23 to 25 lacks an inventive step in light of the common general knowledge.
MANNER OF MANUFACTURE
102. The opponent provided two arguments in support of its contention that the claimed invention is not a manner of manufacture.
103. Firstly they submitted that there is an admission on the face of the specification that the claimed invention is not new as claim 1 can be construed as being synonymous with the human process of manual inspection of chisels as disclosed in page 2, lines 25-30 of the opposed specification.
104. I have earlier found when discussing the novelty of the claimed invention over common general knowledge in the art that a sensible construction of claim 1 does not includes a manual measurement of the position value and the memory device being a human brain or an operator’s manual. This line of argument fails.
105. Secondly the opponent asserted that the invention does not meet the requirement of an “artificially created state of affairs” as set out in National Research Development Corporation v Commissioner of Patents (1959) 102 CLR 252; (1961) RPC 134; 1A IPR 63 and Grant v Commissioner of Patents [2006] FCAFC 120. They submitted that the result of the method of the claimed invention is “mere information, with no concrete, tangible, physical or observable effect” and while that information may be useful it does not involve an artificially created state of affairs.
106. As the applicant pointed out, the invented method when performed provides a number of tangible benefits. It permits the operators of these machines to readily detect when the milling tools have broken or worn out to an extent that they need to be replaced by providing quantitative information as to the state of wear of the tools. This in turn leads to improved efficiency of the milling process and reduction in delays and downtimes associated with regular visual inspections. I am satisfied that the claimed method does result in an artificially created state of affairs. This line of argument also fails.
107. The method of the claimed invention is a manner of manufacture and this ground of the opposition has therefore not been made out.
FULL DESCRIPTION
108. The opponent argued that if the applicant’s evidence to the effect that there would be extensive difficulties and significant research involved in implementing the claimed measurement methods were to be accepted, it follows that the description lacks sufficiency as it does not include any teaching or guidance as to how these difficulties can be overcome in order to perform the invention as claimed.
109. It is a requirement of subsection 40(2) of the Act that the specification must describe the invention fully. The High Court in Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8 at [ 25], 207 CLR 1 at 17 explained this requirement as:
"The question is, will the disclosure enable the addressee of the specification to produce something within each claim without new inventions or additions or prolonged study of matters presenting initial difficulty?"

110. None of the experts involved in these proceedings had any problem in understanding the invention or how it could be put into practice. It is clear from my discussion under Inventive Step that I did not accept the applicant’s contention that implementing a laser based measuring system would not be easy as D1 does not provide sufficient detail as to how to resolve any practical difficulties in implementing such a solution. I am satisfied that the claimed invention is fully described and can be performed without new inventions.
FAIR BASIS
111. The opponent argued that claim 24 is not fairly based. Although they accepted that there is corresponding text in the body of the specification for the detecting the reference value and the position value as the rotation angle of the milling cutter, they argued that the integer of “correlation” between a rotation angle and the reference value and the position value has a broadening effect as claim 24 is dependent ultimately on any of the preceding claims where position and reference values may be other than rotation angles.
112. I am not convinced. The body of the specification at page 17, lines 16-27 provides a real and reasonably clear disclosure of the integer of correlating the reference and position values to the rotation angle of the milling cutter. A sensible interpretation of claim 24 requires that any absurd construction caused by multiple dependencies is to be rejected. Claim 24 is fairly based.
113. The opponent also asserted that claim 25 which is directed to an apparatus for carrying out the method as recited in any one of claims 1-24 is not fairly based as “it is not restricted by reference to any physical feature”.
114. I have discussed this issue earlier when I considered the novelty of claim 25 against the disclosure of D1. For reasons mentioned therein, I am satisfied that claim 25 is also fairly based.
CONCLUSION
115. The invention as defined in claims 1 to 3, 9, 10 and 25 is not novel and claim 23 lacks an inventive step over prior art document D1. Furthermore the invention defined in claims 1 to 3, 9 to 11 and 23 to 25 lacks an inventive step in light of the common general knowledge.
116. The claimed invention is clear, fairly based, fully described and a manner of manufacture.
117. I am of the view that the adverse findings on novelty and inventive step can be overcome by amendment. Consequently I allow the applicant 2 months from the date of this decision to propose suitable amendments.
COSTS
118. The opposition has been successful on the grounds of novelty and inventive step. I therefore awards costs according to schedule 8 against the applicant Wirtgen GmbH.
R Subbarayan
Delegate of the Commissioner of Patents