Voestalpine Schienen GmbH v Nippon Steel & Sumitomo Metal Corporation

[2017] APO 32

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

voestalpine Schienen GmbH v Nippon Steel & Sumitomo Metal Corporation [2017] APO 32

Patent Application:                2010312602

Title:Flash butt welding method of rail steel

Patent Applicant:                   Nippon Steel & Sumitomo Metal Corporation

Opponent:  voestalpine Schienen GmbH

Delegate:  Dr V. Z. Kolev

Decision Date:  4 July 2017

Hearing Date:  05 April 2017, in Canberra

Catchwords:  PATENTS – opposition to the grant of a patent – novelty – inventive step – clear enough and complete enough disclosure – claim support – usefulness – flash butt welding of high carbon hypereutectoid steel rails – reduction of heat affected zones (HAZ) and softened width – problem formulation – opposition unsuccessful – costs awarded

Representation:  Patent attorney for the Applicant: Mr Gregory Michael Turner and Mr Jiarne Hong of SPRUSON & FERGUSON

Counsel for the Opponent: Mr Ian Horak

Patent attorney for the Opponent: Mr Stephen O’Brien of MADDERNS

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application:                2010312602

Title:Flash butt welding method of rail steel

Patent Applicant:                   Nippon Steel & Sumitomo Metal Corporation

Date of Decision:                   4 July 2017

DECISION

Lack of novelty, inventive step, clear enough and complete enough disclosure, claim support, or usefulness is not established.  The opposition is unsuccessful on all grounds.  Subject to appeal, I direct that the patent application proceeds to grant.  

Costs according to Schedule 8 up to the date of filing the request to amend the specification of the application are awarded against Nippon Steel & Sumitomo Metal Corporation.  Costs according to Schedule 8 from the date of filing the request to amend the specification of the application are awarded against voestalpine Schienen GmbH.

REASONS FOR DECISION

1. Throughout this decision, unless explicitly stated otherwise, any reference to an Act or a section, subsection, etc. of an Act refers to the Patents Act 1990 (the Act), and any reference to Regulations or a specific regulation refers to the Patents Regulations 1991 (the Regulations).

   Background

2. The matter relates to patent application 2010312602 (the Application) in the name of Nippon Steel & Sumitomo Metal Corporation (the Applicant).  The Application is a national phase of international application PCT/JP2010/068927 published as WO 2011/052562.  The Application claims a priority date of 30 October 2009.

3. The Application was advertised as accepted on 23 October 2014.  A notice of opposition to grant was filed on 23 January 2015 by voestalpine Schienen GmbH (the Opponent).  The statement of grounds and particulars (the SGP) was filed on 23 April 2015.  A request to amend the SGP under regulation 5.16 was filed on 16 July 2015 and subsequently allowed on 05 August 2015.

4. On 26 May 2016, the Applicant filed a voluntary amendment to the specification of the Application (the Specification) under section 104, which was subsequently allowed on 12 October 2016.

5. The evidence in support, the evidence in answer, and the evidence in reply were completed respectively on 23 July 2015, 23 October 2015, and 23 December 2015, which is before the above mentioned amendment to the Specification.

6. The Opponent’s Written Outline of Submissions with Schedule A – Evidence (Opponent’s Summary, or OS) was filed on 21 March 2017.  The Applicant’s Outline of Submissions (Applicant’s Summary, or AS) was filed on 28 March 2017.

7. The present hearing is with respect to the Specification as amended by the amendment filed on 26 May 2016, and is based on the SGP as amended on 5 August 2015.

   Applicable Law and Onus

8. On 15 April 2013, the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 commenced which resulted in significant amendments to the Act and Regulations affecting, inter alia, the standard of proof required for an opposition to succeed.  For patent applications having a request for examination filed on or after the above commencement date, subsection 60(3A) applies:

   “If the Commissioner is satisfied, on the balance of probabilities, that a ground of opposition to the grant of the standard patent exists, the Commissioner may refuse the application.” (emphasis added) 

9. The examination of the Application was requested on 12 March 2014, hence subsection 60(3A) applies to the instant hearing. In addition, the filing date of the request for examination being after 15 April 2013 also means that the Application was examined under the amended provisions of the Act and Regulations following the Raising the Bar Act and the same are also applicable to the present opposition proceedings.

10. It is well settled that the Opponent has the onus of establishing the facts supporting the grounds of opposition, and this applies even though the standard of proof is “the balance of probabilities”.

    Grounds of Opposition and Evidence

11. The amended SGP lists the following grounds of opposition:

    • Patentable subject matter (manner of manufacture) under paragraph 18(1)(a);
    • Novelty under subparagraph 18(1)(b)(i);
    • Inventive step under subparagraph 18(1)(b)(ii);
    • Usefulness under paragraph 18(1)(c);
    • Clear enough and complete enough disclosure under paragraph 40(2)(a);
    • Claims do not define the invention under paragraph 40(2)(b);
    • Clarity under subsection 40(3); and
    • Support under subsection 40(3).

12. I note that the amended SGP reflects the Specification before the amendment.  In the Opponent’s Summary, a number of the above grounds were dropped, the remaining grounds being as follows:

    • Novelty;
    • Inventive step;
    • Clear enough and complete enough disclosure;
    • Support; and
    • Usefulness.

13. Therefore, I will limit my consideration to the grounds listed immediately above.

14. The evidence in support consists of:

    • A declaration by Dr David Tawfik dated 22 July 2015 (Tawfik-1) with exhibits DT-1 and DT-2;
    • A declaration by Dr David Tawfik dated 23 July 2015 (Tawfik-2) with exhibits DT-3 to DT-9; and
    • A declaration of Mr James Gregory Thornton dated 22 July 2015 (Thornton) with exhibit JGT-1.

15. The evidence in answer consists of:

    • A declaration by Dr Yu-ichi Komizo dated 16 October 2015 (Komizo) with exhibits YK-1 and YK-2; and
    • A declaration by Dr Alan Keith Hellier dated 23 October 2015 (Hellier) with exhibit AKH-1.

16. The evidence in reply consists of:

    • A declaration by Dr David Tawfik dated 22 December 2015 (Tawfik-3).

17. With respect to the grounds of novelty and inventive step, the Opponent relies on the following documents submitted in evidence:

    • GB 2 299 044 A (exhibit DT-3), referred to as D1;
    • US 5,270,514 A (exhibit DT-4), referred to as D2;
    • WO 2005/001204 A1 (exhibit DT-5), referred to as D3;
    • R. Moor, “Prozessüberwachung beim Abbrennstumpfschweißen” (“Process monitoring during flash-butt welding”), including an English translation (exhibit DT-6), referred to as D4;
    • Deutsche Bahn AG, Anwenderfreigabe Nr. Ma 24 / 2007 für Stationäre Abbrennstumpfschweißmaschine Schlatter GAA 100 / 580 (User Release No. Ma 24 / 2007 for Stationary flash-butt welding machine Schlatter GAA 100 / 580), including an English translation (exhibit DT-7), referred to as D5; and
    • NORTRAK, Work Order No. 201037779 (exhibit JGT-1), referred to as D6.

    The Specification

18. Here, I will provide a brief discussion of the Specification as necessary for the understanding of the nature of the claimed invention.  I will return to the description later in this decision when discussing the problem solved by the invention.

19. The technical field of the invention is stated at [0001] as “[t]he present invention relates to a flash butt welding method of rail steel.  Particularly, the invention relates to a flash butt welding method of rail steel which can reduce heat-affected zones (HAZ) in welded portions of hypereutectoid rail steel with a high carbon content, and reduce uneven wear and surface damage of rails”.

20. The Specification explains at [0002] that “[f]lash butt welding is widely used as a welding method of steel.  This method has beneficial features of automation feasibility, highly stable quality, short welding time, and the like”.

21. Figures 1A to 1D (reproduced below) are used to illustrate the basic principles of welding rails using the flash butt welding method:

    “Firstly, as shown in FIG. 1A, a voltage is applied to each of a pair of rail steels 1A and 1B, which are materials to be welded that are disposed opposite to each other, through electrodes 2 from a power supply 3. Simultaneously, the rail steel 1A is moved in the arrow 4 direction so that both end surfaces, which are surfaces to be welded of the rail steels 1A and 1B, are gradually brought close to each other. Then, a short-circuit current locally flows, and the end surfaces are abruptly heated and finally melted by resistance heating. As a result, the pair of rail steels 1A and 1B is bridged with molten metal. In the bridged portion, as show in FIG. 1B, an arc is generated, and a part of the molten metal is scattered (flashing). Furthermore, the end surfaces are heated by resistance heating and arc heating together with the occurrence of flashing, and the two are continuously repeated. This is termed a flashing process.” (at [0003])

    “In addition, the process as shown in FIG. 1C is a process for carrying out heat input into the entire end surfaces of the rail steels 1A and 1B within a short time in the flashing process, and is termed a preheating process. In the preheating process, firstly, a large electric current is made to flow for a certain time in a state in which the pair of the rail steels 1A and 1B are forcibly brought into contact with each other, the vicinities of the end surfaces are heated by resistance heating, and then the pair of the rail steels 1A and 1B are pulled apart. These processes are repeated several times.

    Since the preheating process effectively carries out heat input into the welding surface, and produces an effect of shortening the welding time, a welding method is employed in which the preheating process is combined with the flashing process.” (at [0004])

    “After the entire surfaces to be welded are eventually melted in the flashing process, as shown in FIG. 1D, the surfaces to be welded of the rail steels 1A and 1B are swiftly held together by a large welding pressure, the majority of the molten metal in the welded surfaces is removed outside, and portions behind the welded surfaces, which are heated to a high temperature, are pressed and deformed, thereby forming a joining portion. This is termed an upset process.” (at [0006])

22. The welding method modifications subject to the Application are summarised at [0037]:

    “As rails that satisfy wear resistance necessary for heavy load railway rail, hypereutectoid rail steel with a high carbon content, which contains 0.85% to 1.20% of C and has a pearlite structure, is widely used.

    The present inventors conceived that, in order to solve the above problems in welded portions in a case in which the rail steel is flash-butt-welded, it is effective to provide a precipitous heat distribution in the vicinity of a welded surface so as to reduce the softened width in a welding portion. In addition, the inventors conceived that, as a method for realizing the above, it is effective to decrease the heat input amount in the vicinity of the welded surface and increase the heat input rate immediately before the upset process.”

23. The Specification provides the following definitions (emphasis added): 

    “A velocity at which the pair of the rail steels are brought close to each other in the flashing process is termed a flashing velocity. In addition, the erosion amount of a molten substance removed when the rail steels are brought close, and the molten metal is scattered in the flashing process is termed flash-off distance” (at [0005])

    “The flash-off distance refers to the distance of rail lost by melting scattering or deformation in the respective processes.” (at [0041])

    “In the present specification, an area which can be differentiated from the base material by the micro or macro-observation, as described later, will be termed a HAZ.” (at [0008])

    “Meanwhile, the softened width refers to a range in which the hardness falls below that of the base material.” (at [0018])

24. The Specification describes the flashing and preheating as a somewhat combined process performed before the upset process, however with respect to the disclosed welding method, in order to achieve the “precipitous heat distribution in the vicinity of a welded surface”, the Specification focuses mainly on the part of the flashing that is performed after the end of the preheating and before the beginning of the upset process (for brevity, I will refer to this part of the flashing as the “final flashing process”).  In particular, this goal is achieved by optimising process parameters like the flashing velocity and the flash-off distance which, in turn, is said to result in beneficial reduction of the HAZ width and the softened width leading to a better wear resistance in the welded portions of the rails.

25. In the welding method subject to the opposed application, the above mentioned final flashing process is divided into two consecutive stages with different parameters – the former flashing process and the latter flashing process:

    “The flashing process after the preheating process in the embodiment is composed of the former flashing process and the latter flashing process …” (at [0043])

26. The parameters of the former and the latter flashing processes are denoted using the words “former” and “latter”, respectively, e.g. “the latter flash-off distance indicates the erosion amount of a material to be welded removed by scattering of welding metal from rail steel in the latter flashing process (length of eroded rail)” (at [0049], emphasis added), and similarly for the other parameters.

27. The Specification ends with 3 (three) claims.  Claim 1 is the only independent claim and it is reproduced below.  Since the claim defines a number of features, for brevity in the parties’ submissions, each feature was assigned a label.  I find it convenient to adopt these labels in my discussions, hence I have also included the labels below in bold:

    “1. A flash butt welding method of a pair of track rail steel pieces [feature A], each of the track rail steel pieces containing 0.85 to 1.20 percent of Carbon by mass [feature J], the method comprising:
               an initial flashing process in which a voltage is applied to the pair of track rail steel pieces, and welding surfaces, which are the end surfaces of the pair of track rail steel pieces, are slowly brought closer to each other so that short-circuit currents are made to flow locally, the welding surfaces are heated and welded through resistance heating, furthermore, flashing is caused in the welding surfaces, and the welding surfaces are heated by the resistance heating and arc heating of the flashing [feature B];
               a preheating process in which, after the initial flashing process, an electric current is made to flow for a predetermined time in a state in which the welding surfaces are forcibly brought into contact with each other, and vicinities of the welding surfaces are heated by the resistance heating, and, after the predetermined time, the welding surfaces are pulled apart [feature C];
               a former flashing process in which, after the preheating process, the flashing is partially caused in the welding surfaces, and the welding surfaces are heated by the resistance heating and the arc heating of the flashing, wherein an average velocity at which the pair of track rail steel pieces are brought closer to each other in the former flashing process is defined as a former flashing velocity [feature D];
               a latter flashing process in which, after the former flashing process, the flashing is furthermore caused throughout the entire welding surfaces, and the entire welding surfaces are uniformly heated by the resistance heating and the arc heating of the flashing, wherein an average velocity at which the pair of track rail steel pieces are brought closer to each other in the latter flashing process is defined as a latter flashing velocity [feature E]; and
               an upsetting process in which, after the latter flashing process, the welding surfaces are abruptly brought close to each other by a large welding pressure, a majority of a molten metal on the welding surfaces is exhausted outside, and rear portions of the welding surfaces, which are heated to a high temperature, are pressurized and deformed, thereby forming a welded portion [feature F],
               wherein the latter flashing velocity is 2.1 mm/sec to 2.8 mm/sec and is increased to higher than the former flashing velocity [feature G], and
               wherein a latter flash-off distance in the latter flashing process is in the range defined in equation 1:
               60mm ≥ [the latter flash-off distance] ≥ { 22.6 - ( 6 × [erosion amount per second in the latter flashing process] ) } mm ... (equation 1). [feature I]”

28. The non-sequential feature labelling is a consequence of the allowed amendment which promoted to claim 1 some features of the former dependent claims.  The main points of contention between the parties relate to features D, E, J, G, and I.

    Construction

    The former flashing process and the latter flashing process

29. There is no disagreement between the parties that the former flashing process and the latter flashing process are consecutive flashing processes and this is also clear from the claim language.  For brevity, I will refer to these consecutive processes as “former flashing” and “latter flashing”.

30. Dr Tawfik states:

    “In relation to the ‘former flashing process’ and the ‘latter flashing process’, I consider that these ‘processes’ can be identified in any flashing stage of a rail flash butt welding process. In my opinion, the ‘602 Application has arbitrarily divided the well understood continuous flashing stage (that is, the flashing stage which occurs between the pre-heating stage and the commencement of the upset stage) into two sub-processes.” (Tawfik-2 at [53])

31. I note that neither of the Experts for the Applicant expressly disagrees with Dr Tawfik that “[i]n relation to the ‘former flashing process’ and the ‘latter flashing process’, … these ‘processes’ can be identified in any flashing stage of a rail flash butt welding process”.  Dr Komizo goes no further than to state e.g.:

    “I am of the opinion that Exhibit JGT-1 does not explicitly state a flash butt welding method comprising a latter flashing process in which a latter flashing velocity is specified as being in the range of 2.1 mm/sec to 2.8 mm/sec.” (Komizo at [53], emphasis added)

32. Based on the evidence on file, I conclude that the former and the latter flashing are inherently present in any flash butt welding method of steel rails, without necessarily being identified as such.  Then the question becomes how to determine the point in time when the former flashing ends and the latter flashing begins.  Given that parameters like the latter flashing velocity and the latter flash-off distance are critical for defining the invention in claim 1 (see features G and I), the clear differentiation between the former and latter flashing is highly important.

33. The language of claim 1 suggests two distinctions, i.e. the surface area over which flashing occurs and the flashing velocity.  In the former flashing, “the flashing is partially caused in the welding surfaces, and the welding surfaces are heated”, whereas in the latter flashing, “the flashing is furthermore caused throughout the entire welding surfaces, and the entire welding surfaces are uniformly heated”.  For brevity, I will refer to the flashing that is “partially caused in the welding surfaces” as “partial flashing”, and I will refer to the flashing “caused throughout the entire welding surfaces” where “the entire welding surfaces are uniformly heated” as “full flashing”.  In addition, the claim defines that “the latter flashing velocity … is increased to higher than the former flashing velocity”.

1. The Applicant submits:

   “… Feature D of claim 1 recites at least a former flashing process in which, after the preheating process, the flashing is partially caused in the welding surfaces. Also, Feature E of claim 1 recites at least a latter flashing process in which, after the former flashing process, the flashing is furthermore caused throughout the entire welding surfaces.

   Accordingly, as clearly recited in claim 1, the former and the latter flashing processes are at least clearly distinguished by the degree of flashing (i.e., partial or entire) and not arbitrarily divided as suggested by the Opponent.” (AS at [38-39], original emphasis)

2. If I am to accept this interpretation, I need to be satisfied that practical ways to differentiate between the partial and the full flashing are either disclosed in the Specification or well known to the skilled reader, a fact to be established by the evidence.  In that respect, I note that the Specification is completely silent on the issue, and the Applicant’s oral submissions (as best understood) that the welding current can be used as an indicator are not supported by Expert evidence.  Looking at some of the welding charts as presented in various documents in evidence (see e.g. Figure 3A of D2 reproduced later in this decision), due to the gradual nature of the welding current variations (neglecting the random noise), it is not immediately apparent to me how this can work.  Based on the evidence on file, on the balance of probabilities, I am not satisfied that the partial flashing and the full flashing are distinguishable in practice with sufficient accuracy.

3. In addition, I note that the claim language does not explicitly provide for differentiation based on partial and full flashing.  Although the former flashing must include partial flashing and the latter flashing must include full flashing, nether the former flashing is limited to partial flashing nor is the latter flashing limited to full flashing.  In other words, the expression “former flashing process in which, after the preheating process, the flashing is partially caused in the welding surfaces” does not explicitly exclude full flashing being also caused during the former flashing and, similarly, partial flashing is also not excluded during the latter flashing.

4. I also note that in defining the latter flashing, the claim uses the word “furthermore”.  Macquarie Dictionary (online edition as at 11 April 2017) defines “furthermore” as: “moreover; in addition”.  In the same edition, “moreover” is defined as “beyond what has been said; further; besides”.  From the claim language, I consider that the word “furthermore” is used with respect to the partial flashing, i.e. the full flashing is in addition to (or beyond, or besides) the partial flashing.  However it is unclear whether the word “furthermore” refers to the partial flashing during the former flashing (the word “furthermore” then appears redundant); or whether the word “furthermore” refers to possible partial flashing that may also occur during the latter flashing stage.

5. During the hearing, referring to Tawfik-2 at [67-68] the Opponent submitted that, after the preheating, the flashing will always start as partial flashing, and immediately before the upset, the flashing will always be full flashing.  Dr Hellier and Dr Komizo do not appear to disagree and, on balance, I consider this correct.  However, it follows that a completely arbitrary division of the final flashing process into former and latter flashing (as long as the latter flashing velocity is higher than the former flashing velocity) would satisfy the defined limitations as the former flashing will always include (at least in its beginning) partial flashing and the latter flashing will always include (at least in its end) full flashing.

6. I will need to refer to the body of the Specification for guidance (emphasis added):

   “The flashing process after the preheating process in the embodiment is composed of the former flashing process and the latter flashing process, in which the flashing velocity differ respectively.

   In the former flashing process, flashing is partially caused between the facing welding surfaces, and the welding surfaces are heated by the resistance heating and arc heating of the flashing…

   Similarly to the former flashing process, flashing is caused between the facing welding surfaces in the latter flashing process, but the latter flashing process is different from the former flashing process in that the flashing velocity in the latter flashing process (the latter flashing velocity) is increased to higher than the flashing velocity in the former flashing process (the former flashing velocity).

   That is, in the latter flashing process, the flashing caused in the part of the welding surfaces in the former flashing process is caused in the entire welding surfaces by increasing the flashing velocity, and the entire welding surfaces are uniformly heated by the resistance heating and arc heating of the flashing.” (at [0043-0044])

   “Meanwhile, when the latter flashing velocity is simply increased, freezing, which acts as a cause of a welding defect, occurs as described above. Therefore, with regard to the heat input amount before the latter flashing velocity is increased, a flashing time and the number of preheating processes, which are preferable so that the latter flashing process can be begun at an increased latter flashing velocity, and, even in the subsequent processes, the latter flashing is stabilized and maintained, are set.” (at [0048])

   “In the embodiment, the number of preheating processes is set to 7, and the total time of the initial flashing process and the former flashing process is set to 120 seconds. In addition, flash butt welding is carried out by changing the latter flashing velocity and the latter flash-off distance respectively in the latter flashing process.” (at [0049])

7. The above quotations suggest that, in explaining the distinction between the former and the latter flashing, the description focusses primarily on the flashing velocity and not on whether the flashing is partial or full.  Dr Tawfik provides similar interpretation:

   “… I consider that the terms ‘former flashing process’ and ‘latter flashing process’ … are used to assign velocity attributes to periods of flashing which are inherent in any continuous flashing stage of a rail flash butt welding process.” (Tawfik-2 at [55])

8. Dr Hellier and Dr Komizo do not provide clear comments on the issue, with the exception of Dr Komizo’s note that the first half of the final flashing process “is arbitrarily considered the former flashing period by Tawfik” (Komizo at [23 and 27]). 

9. The view that the former and latter flashing are to be distinguished by the flashing velocity is further reaffirmed by the explanations provided with respect to Figure 3 (reproduced below):

   “FIG. 3 shows an example of the former flashing process having a constant flashing velocity, but the same effects can be obtained even in a case in which the velocity is increased as time elapses. In a case in which the former flashing velocity is accelerated, the average velocity is considered the former flashing velocity.

   In addition, in a case in which the latter flashing velocity is accelerated, the average velocity is considered the latter flashing velocity.

   Furthermore, in a case in which the flashing velocity is increased as time elapses from the end of the preheating process to the upset process, and it is difficult to differentiate the former flashing process and the latter flashing process, the first half of the elapsed time from the end of the preheating process to the upset process is considered the former flashing process, and the second half is considered the latter flashing process. In addition, the average velocity of the flashing velocity in the former flashing process is considered the former flashing velocity, and the average velocity of the flashing velocity in the latter flashing velocity is considered the latter flashing velocity.” (at [0046], emphasis added)

10. I note that, in the case emphasised above, the distinction between the former and latter flashing is done simply by dividing the time period of the final flashing process in two halves.  There is no suggestion (and indeed it would appear unlikely) that, in this case, the transition from partial to full flashing would exactly coincide with the transition between the former flashing and the latter flashing.   

11. Therefore, I conclude that the former and latter flashing are to be distinguished solely by the flashing velocity.  I consider that the partial flashing occurs at least in the beginning of the former flashing and the full flashing occur at least in the end of the latter flashing, with the transition between the two occurring at some intermediate point in time governed by the chosen flashing velocity profile.  I note that this interpretation does not contradict the claim language as discussed above.

12. With respect to the explanations related to Figure 3, I consider that the Specification describes two options of implementing the method which differ by the way in which the velocity is varied and the former and latter flashing are distinguished:

    (i) Both the former and the latter flashing velocities are constant as illustrated in Figure 3.  In this case the graph of “movement distance vs time” would have a distinctive “kink” representing the abrupt increase of the flashing velocity as illustrated in Figure 3.  The point in time of this “kink” will then be the end of the former flashing and the beginning of the latter flashing (see Figure 3).  I note that a distinctive “kink” serving the same purpose will also appear in the case where either one or both of the former and the latter flashing velocities are increasing in time, however the highest former flashing velocity is lower than the lowest latter flashing velocity. 

    (ii) The flashing velocity is continuously increasing throughout the entire final flashing process.  In this case, if the graph clearly shows a distinctive feature corresponding to the point when the flashing velocity is rapidly increased, then this feature will be the end of the former flashing and the beginning of the latter flashing.  If however, the graph is substantially smooth and, thus, it is difficult to find a clear point that could serve as the end of the former flashing and the beginning of the latter flashing, then the first half of the time period of the final flashing process is considered the former flashing and the second half is considered the latter flashing.

13. I consider that both described options, with their variations discussed at (i) and (ii), are within the scope of claim 1 and, as discussed above, each one of them provides a clear way of distinguishing between the former flashing and the latter flashing.

    The latter flashing velocity

14. In claim 1, the latter flashing velocity is defined as “an average velocity at which the pair of track rail steel pieces are brought closer to each other in the latter flashing process” (emphasis added).  The Opponent submits that:

    “Claim 1 specifically uses the language characterising an average velocity in the latter flashing process rather than the average velocity of the latter flashing process.

    This suggests a construction which does not require that the average velocity throughout the whole of the latter flashing process would be within the range of claim 1 merely that, at some point, there be an average velocity that would fulfil that criteria. In other words, the choice of the words “in the” requires that, in some part of that process, that there be an average velocity that meets that description. This will inevitably follow in circumstances where the velocity is accelerated though the velocity ranges disclosed in D4, D5 and D6 (to be discussed below).” (OS at [102-103], emphasis in the original, reference(s) omitted)

15. Such a specific construction appears supported by Dr Tawfik at [77-78] of Tawfik-2 and at e.g. [66-78] of Tawfik-3 with respect to the disclosure of documents D4, D5, and D6.  However on purposive construction, I do not consider this a valid interpretation.  When the term “average velocity” is used, the period over which the velocity is averaged is to be clearly identifiable, otherwise the term would be meaningless.  With respect to the latter flashing velocity, the claim defines no other period apart from the period of the latter flashing.  Hence I conclude that the latter flashing velocity is the average flashing velocity over the entire period of the latter flashing.

    Latter flash-off distance and erosion amount per second

16. Equation 1 (feature I of claim 1) includes the physical quantities of the “latter flash-off distance” and the “erosion amount per second in the latter flashing process”.  The latter flash-off distance is defined in the Specification at [0049] quoted earlier.  Further, at [0065], the Specification states:

    “Here, the erosion amount per second in the latter flashing process can be obtained by (the total erosion amount in the latter flashing process / the time necessary for the latter flashing process).”

17. It is accepted by both parties that the “erosion amount per second in the latter flashing process” is equal to the average flashing velocity over the later flashing period (i.e. the “latter flashing velocity”):

    “The erosion amount per second is the same as the average flashing velocity in the latter flashing process.” (OS at [49], reference(s) omitted)

    “In the context of the specification, I understand the reference to the term ‘erosion amount per second’ to correspond with the average flashing velocity over the latter flashing distance defined in equation 1 of claim 1.” (Tawfik-2 at [80])

    “The Opponent’s submissions, para. [48], states that the erosion amount per second is the same as the average flashing velocity in the latter flashing process. The Opponent refers to statements made by Dr. Tawfik, para. [80] in Tawfik-2 to support this view. Whilst the Applicant does not disagree …” (AS at [44])

18. Taking into account the above, as well as in light of the example calculations provided in the Specification and the definitions I quoted earlier, I agree with the parties.

    Novelty under Subparagraph 18(1)(b)(i) and Subsection 7(1)

19. The well-established test for novelty can be found 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.”

20. This test requires that all essential features of the claimed invention are disclosed in the prior art document.  The level of disclosure in the prior art document was considered in The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited and Others [1972] RPC 457 at 486 as “… must contain clear and unmistakeable directions to do what the patentee claims to have invented”.

    Is claim 1 novel?

21. The Opponent raises this ground of opposition with respect to all documents D1 to D6, however, the relevance of documents D4, D5, and D6 for novelty is subject to the specific construction given to the latter flashing velocity in claim 1 as discussed above:

    “If this construction were accepted then D4, D5 and D6 would anticipate. If the delegate considers that the average velocity must be calculated only across the whole of the latter flashing process (ie. the average flashing velocity of [rather than in] the latter flashing process) then the velocity values would fall marginally outside the scope of claim 1. This would make those documents relevant for inventive step.” (OS at [104]).

22. I have already considered the construction of the term “latter flashing velocity” in claim 1, and concluded that this specific construction is not a valid interpretation of the term in question.  Therefore, I will discuss documents D4, D5, and D6 only with respect to inventive step, and my consideration of novelty will be limited to documents D1, D2, and D3.

    The disclosure of D1

23. The Opponent admits that feature J (“each of the track rail steel pieces containing 0.85 to 1.20 percent of Carbon by mass”) is not explicitly disclosed in D1 (for brevity, I will refer to this type of steel as “high carbon steel”).  However they submit that:

    “D1 teaches that the flash butt welding process disclosed can be applied in relation to any suitable and commercially made rail. The disclosure teaches, for the purposes of practical utility, that it is applicable to rail steel having the carbon content specified in claim 1 being a widely available standard rail.” (OS at [78])

24. The Opponent also refers to Dr Tawfik:

    “The feature introduced by Feature J does not alter the process sought to be claimed at claim 1. Based on my knowledge and experience, forming rail strings from track rail steel pieces containing Carbon (C): 0.85% to 1.2% by mass by rail flash butt welding follows the same procedure as for other rail grades. It was well known to me and others in the field that track rail steel pieces which contain Carbon (C): 0.85% to 1.2% by mass could be flash butt welded by suitable selection of welding variables. The selection of these variables is a routine part of implementing a flash butt welding process for any steel grade.” (Tawfik-2 at [81], emphasis added)

25. I consider that the above statement goes no further than to confirm that rails of high carbon steel can be welded by flash butt welding using “the same procedure as for other rail grades” (i.e. the same process steps), when a “suitable selection of welding variables” is made.  In this paragraph, Dr Tawfik does not state that the welding variables or parameters are independent of the type of steel (which, as best understood, was the Opponent’s oral submission during the hearing).  Indeed Dr Tawfik later even comments that “[f]urthermore, the variables also depend on the size and grade (chemical composition) of the rail steel” (Tawfik-3 at [80], emphasis added).

26. The Opponent points to D6 which, in light of Thornton at [8], provides some information on the particular welding parameters used with high carbon steel rails.  Although the values for latter flashing velocity and latter flash-off distance as extracted by Dr Tawfik from the welding charts of D6 (further details in my inventive step discussion below) are close to the ranges defined in features G and I of claim 1, these values are still not within the defined ranges.

27. In addition, the Specification does not suggest that the described method parameters would be equally applicable to flash butt welding of steel for other rail grades (further details in my discussion of the problem below).

28. On the balance of probabilities, I do not find the evidence on file sufficient to establish that the same process parameters or welding variables can be used for flash butt welding of high carbon and other grades of rail steel to achieve identical results in terms of weld region properties.

29. Returning to D1, I note that the information about the relevant welding variables of the final flashing process is very general and only expressed in terms of typical ranges:

    “During this [flashing] stage the rail interfaces become molten, and the correct conditions for the final upset or the forging stroke are achieved. The moving head of the welding machine during this stage is accelerated parabolically, with the resultant increase in the frequency and number of flashing ruptures or arcs across the weld interface. This ensures that the oxygen content at the weld interface is reduced sufficiently to give a semi-protective atmosphere. The primary purpose of the final flashing stage is to generate enough heat to produce a plastic zone that permits adequate upsetting. A total flashing distance of between 9 and 15 mm, over a period of 5 to 10 seconds, is typically employed for rails.” (D1, page 8, emphasis added)

1. Based on this disclosure, taking 9 mm over 5 seconds and 15 mm over 10 seconds, Dr Tawfik calculated values for the latter flashing velocity and the latter flash-off distance satisfying the requirements imposed by features G and I of claim 1 (see Tawfik-2 at [13, 73, and 80]). 

2. Given the generic nature of the disclosed parameter ranges, I consider that these typical ranges cannot be properly used to derive the latter flashing velocity and the latter flash-off distance for high carbon steel rails as required by claim 1 (see features G, I, and J), in the way Dr Tawfik has done.  In that respect, I do not consider that the relevant wording in D1 necessarily supports the interpretation that the values in the two disclosed typical ranges are corresponding to each other in a particular way (e.g. 9 mm over 5 seconds, and 15 mm over 10 seconds).  The wording in D1 suggests that any value in the first range (i.e. 9 to 15 mm) is typical and any value of the second range (i.e. 5 to 10 seconds) is also typical.  Hence I consider that, in terms of flashing velocity, a wide parameter space is disclosed as typical, i.e. from about 9 mm over 10 seconds to about 15 mm over 5 seconds.

3. In addition, Dr Tawfik’s calculations draw criticism from the Applicant, in that the “displacement vs time” curve would, in practice, deviate from the perfect mathematical parabola used by Dr Tawfik, and that the starting velocity of the final flashing process will not be zero as assumed by Dr Tawfik (see e.g. Hellier at [14-17, 46, 49, 52], Komizo at [19-21, 27-28, 36], and Tawfik-3 at [22-26]).

4. Even if some of the parameters within the disclosed typical parameter space would result in values satisfying the requirements of features G and I of claim 1 (subject to the issues of the parabolic curve and initial flashing velocity mentioned above), there is no suggestion that all parameters will do so (see e.g. Tawfik-3 at [35-39]).  I consider this possible partial disclosure well short of the “clear and unmistakeable directions” to employ the values defined by features G and I in the method disclosed in D1.

5. Furthermore, even if I assume that in referring to rails, D1 refers to high carbon steel rails as well as to other steel grade rails, then the disclosed ranges would have to include values typical to high carbon steel as well as values typical to other grades of rail steel, which values might be different (see above).

6. On the balance of probabilities, I am not satisfied that claim 1 is not novel in light of the disclosure of D1.

   The disclosure of D2 

7. Similarly to D1, document D2 does not explicitly disclose the carbon content of the rail steel.  This is acknowledged by the Opponent, however they submit that the related feature J of claim 1 is implied for the same reasons as stated with respect to D1.

8. In addition, the Opponent relies on the graph of Figure 3B (provided below together with Figure 3A) in combination with the scale given in D2 at column 9, lines 31-34:

   “Each horizontal line on the chart of FIG. 3B represents a platen movement of ¼ inch, while the distance between vertical lines represents a time span of 5 seconds.”

9. Based in this information, by dividing the period of the final flashing process (labelled with “F.” in Figure 3B) into two halves corresponding to the former flashing and the latter flashing, Dr Tawfik calculated the latter flashing velocity and the latter flash-off distance (see Tawfik-2 at [24, 74, 80]).  The so calculated values of these parameters satisfy the requirements of features G and I, respectively, of claim 1.

10. The Applicant argues that Figure 3B is only illustrative, and its accuracy is insufficient.  To support their view, the Applicant notes the inaccuracies in Figure 3A as identified e.g. in Hellier at [27]:

    “It is my understanding that Figure 3A of Exhibit DT-4 is a strip chart showing the relation of welding current to time during welding cycles. However, it is self-evident that Figure 3A depicts the welding current (i.e., y-axis) increasing as time (i.e., x-axis) travels in the negative direction. As this is fundamentally not possible, this clearly demonstrates the inaccuracies of these figures.”

11. I agree that what Figure 3A depicts is physically impossible, hence this figure cannot be an accurate representation of a flash butt welding process.

12. The Applicant also refers to D2, column 10, lines 59-66:

    “The current draw and displacement or velocity curve for the movable platen 30 during the flashing phase immediately prior to upsetting or forging of the rail ends together is depicted in FIGS. 3A and 3B by the symbol ‘F’. It is seen that the platen 30 undergoes significant acceleration during the flashing phase in which the platen moves through a distance of approximately 9/16 inch in a continuous motion.”

13. In my view, this part of D2 clearly refers to the total flashing distance during the final flashing process, as it is this final flashing process that is labelled by the symbol “F.”.  This is also confirmed in Hellier at [28] and Komizo at [33].  I note that in the evidence in reply (i.e. Tawfik-3), Dr Tawfik does not provide any comments with respect the above quoted text of D2.  I also note that a total flashing distance during the final flashing process of 9/16 inch approximately equals 14.3 mm, whereas using the graph on Figure 3B and the given scale, Dr Tawfik calculated the total flashing distance to be 19 mm, which is more than 30% longer.

14. I consider that the teaching of D2 is to be derived from the disclosure of this document as a whole, hence I do not agree that Figure 3B should be considered in isolation (except for the part of the text disclosing its scale).  Figure 3A is placed on the same drawing sheet and substantially aligned with Figure 3B with the apparent intention to illustrate with reference to a common time scale (see the common labels for the welding process steps “S.F.”, “P.H.”, “F.”, and “U.” between the two graphs) how the current draw and the platen displacement vary during the welding process.  This also appears acknowledged by Dr Tawfik: “Figure 3B of the ‘514 Patent [D2] depicts the displacement or movement of the movable rail support platen versus time in relation to a current and time curve depicted in Figure 3A” (Tawfik-2 at [24], emphasis added).

15. The fact that Figure 3A is clearly inaccurate casts a significant doubt about the accuracy of Figure 3B, which doubt is further increased by the above mentioned discrepancy between the total flashing distance calculated from Figure 3B and the total flashing distance stated in the text.  The fact that Figure 3B does not manifestly expose inaccuracies (in the same way as Figure 3A does) is insufficient to compensate for this significant doubt.

16. In addition, I am not convinced that Dr Tawfik’s approach of dividing the period of the final flashing process in two halves to differentiate the former flashing and the latter flashing is appropriate.  As I discussed earlier, this dividing in two halves is not universally applicable (see e.g. Figure 3 of the Application, where this is clearly not the case).  It only applies when the flashing velocity increases gradually without an abrupt change manifesting itself as a prominent feature or “kink” in the “displacement vs time” graph.  However it appears that there is a “kink” in each one of the curves representing the final flashing processes labelled with “F.” in Figure 3B (very close to the ends of the flashing processes and more pronounced on the second one).  Further, at column 10, lines 40-43 of D2 it is stated (emphasis added):

    “As final flashing is initiated, the platen velocity is slow to eliminate any jagged ends left from the preheating phase. The platen velocity will then increase parabolically to the upset point”.

17. While this may or may not be the reason for the noticeable “kink” in each of the curves, if D2 was teaching a flash butt welding method having former and latter flashing as defined in claim 1, this point of change from a slow platen velocity to a parabolically increasing velocity would appear to be the point where the former flashing ends and the latter flashing begins.  If the “kinks” were those points, then it appears that this approach will result in a considerably higher latter flashing velocity in comparison with the value calculated by Dr Tawfik by dividing the period of the final flashing process in two halves.

18. I note that when discussing D5 and D6, Dr Tawfik uses similar approach to determining the point where the former flashing ends and the latter flashing begins, in preference to dividing the period of the final flashing process in two halves (see Tawfik-3 at [61-63, 68-70, and 73-75]).

19. Even if I assume that high carbon steel rails are implicitly disclosed, based on the above discussion, on the balance of probabilities, I am not satisfied that claim 1 is not novel in light of the disclosure of D2.

    The disclosure of D3

20. Similarly to D1, document D3 provides a disclosure of a typical flashing stage (final flashing process) of the flash butt welding method of steel rails:

    “The movable platen of the welding machine during this [flasing] stage is generally accelerated parabolically, … A total flashing distance of between 10 and 15mm, over a period of 5 to 10 seconds is typically employed.” (D3, page 3, emphasis added)

21. The only minor difference is that the typical range of flashing distances in D3 starts at 10 mm, whereas in D1, the same starts at 9 mm.  While D3 also includes some welding charts (see Figures 1 and 2), Dr Tawfik does not provide detailed comments on them, except the brief mentioning of Figure 1 at [22] of Tawfik-3.  It appears reasonable to infer that the values that could have been extracted from these charts would not satisfy the requirements of features G and I of claim 1.  The Opponent’s arguments with respect to D3 are based on the generic disclosure that is very similar to that of D1.  Given this, my discussion of D1 is equally applicable to D3, therefore, on the balance of probabilities, I am not satisfied that claim 1 is not novel in light of the disclosure of D3.

    Novelty conclusion

22. I did not find that claim 1 is not novel in light of any one of D1, D2, and D3.  As I mentioned above, my novelty consideration is limited to these three documents, hence I did not find that claim 1 is not novel.  Claims 2 and 3 add further features to the features defined in claim 1, therefore I have no reasons to consider any of these claims not novel.

23. In conclusion, I have not established that any one of the claims of the Application is not novel.

    Inventive Step under Subparagraph 18(1)(b)(ii) and Subsection 7(2)

24. Subsections 7(2) and 7(3) state:

    “(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.”

25. The test for obviousness was developed in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12; (1981) 148 CLR 262 (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.” (at [45])

26. In considering the question of what constitutes “a matter of routine”, in Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59; (2002) 212 CLR 411; (2002) 194 ALR 485; (2002) 77 ALJR 398, it was stated at [53]:

    “That way of approaching the matter has an affinity with the reformulation of the ‘Cripps question’ by Graham J in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd. This Court had been referred to Olin in the argument in Wellcome Foundation. Graham J had posed the question:

    ‘Would the notional research group at the relevant date, in all the circumstances, which include a knowledge of all the relevant prior art and of the facts of the nature and success of chlorpromazine, directly be led as a matter of course to try the -CF₃ substitution in the “2” position in place of the -C1 atom in chlorpromazine or in any other body which, apart from the -CF₃ substitution, has the other characteristics of the formula of claim 1, in the expectation that it might well produce a useful alternative to or better drug than chlorpromazine or a body useful for any other purpose?’ (emphasis added)

    That approach should be accepted” (original emphasis, references omitted)

27. In Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) [2007] HCA 21; (2007) 235 ALR 202; 81 ALJR 1070, it was stated:

    “In Alphapharm, this Court reiterated that ‘obvious’ means ‘very plain’, as stated by the English Court of Appeal in General Tire & Rubber Co v Firestone Tyre and Rubber Co Ltd. The majority in Alphapharm also confirmed that the question of whether an invention is obvious is a question of fact, that is, it is what was once a ‘jury question’. Broadly speaking, the question is not a question of what is obvious to a court. As well as being a question of fact, the question of determining whether a patent involves an inventive step is also ‘one of degree and often it is by no means easy’, because ingenuity is relative, depending as it does on relevant states of common general knowledge….

    Further, as recognised in Beecham Group Ltd’s (Amoxycillin) Application, as a basic premise, obviousness and inventiveness are antitheses and the question is always ‘is the step taken over the prior art an “obvious step” or “an inventive step”’? An inventive step is often an issue ‘borne out by the evidence of the experts’. There is no distinction between obviousness and a lack of inventive step. A ‘scintilla of invention’ remains sufficient in Australian law to support the validity of a patent. In R D Werner Lockhart J stated that there must be ‘some difficulty overcome, some barrier crossed’. This is consonant with older authorities in the United Kingdom which recognised that some inventiveness was required to distinguish patentable advances over the prior art from advances which ‘any fool’ could devise. It also accords with the requirement in the United States that for an invention to be ‘non-obvious’ it must be ‘beyond the skill of the calling’.” (at [51-52], emphasis added, reference(s) omitted)

28. Relevantly to this opposition, it is important to emphasise that obviousness is a question of fact that is to be established by evidence, and that the magnitude of technical differences between the prior art and the claimed invention (i.e. the “size” of the step) is not determinative of obviousness since a “scintilla of invention” is sufficient.

    The problem

29. In applying the test of Wellcome Foundation, I need to identify the problem solved by the claimed invention.

    What the Specification describes as the problem

30. I will refer again to paragraph [0001] of the description (emphasis added):

    “The present invention relates to a flash butt welding method of rail steel. Particularly, the invention relates to a flash butt welding method of rail steel which can reduce heat-affected zones (HAZ) in welded portions of hypereutectoid rail steel with a high carbon content, and reduce uneven wear and surface damage of rails.”

31. In addition, at [0005] the Specification explains that:

    “If the flashing velocity becomes excessive while the heat input into the surfaces to be welded is not sufficient, a phenomenon termed freezing occurs… Since the freezing generates oxides, which deteriorates the bending performance, it is necessary to avoid the freezing as much as possible.”

32. At [0009-0017], the Specification provides a relatively detailed discussion of the mechanism of HAZ generation during the flash butt welding of rails.  I note that this discussion starts with the statement that “[r]ail steel made of hypereutectoid steel with a high carbon content contains 0.85% to 1.20% of C, and exhibits a pearlite structure”, and appears directed entirely to high carbon steel.

33. Paragraph [0019] states that “[r]egarding the above problem of softening in the flash-butt-welded portion, the following technique is proposed”, and in the following paragraphs [0020-0031], the description discusses the prior art attempts to solve this problem.  I note that under the heading “Technical Problem” (see page 12), the description explicitly states:

    “As described above, a softened portion having a lowered hardness is generated in a rail welded portion. When the softened portion is long in the longitudinal direction of a rail, and, furthermore, the hardness is significantly lowered, uneven wear progresses in the softened portion due to train wheels passing on the rail head portion, which sometimes causes noise and vibration. In addition, when uneven wear becomes large, there are cases in which an impact on the rail is increased when train wheels pass.
    …
    Since the contact area between train wheels and the rail is considered to be approximately 15 mm as shown in Patent Document 3, in a case in which the HAZ width is approximately 42 mm, and the softened width is approximately 25 mm to 30 mm as shown in Patent document 2, uneven wear progresses in the softened portion, and an impact on the rail is liable to be increased when train wheels pass.” (at [0026-0027])

34. At [0032], under the heading “Object of Invention”, it is stated:

    “It is the object of the present invention to substantially overcome or at least ameliorate one or more of the foregoing disadvantages.”

    The Opponent’s submissions on the problem

35. I note that despite referring to the test for obviousness formulated in Wellcome Foundation (OS at [115]), the Opponent does not provide clear submissions on the problem the hypothetical addressee is faced with. During the hearing, I asked the Opponent and the Opponent mentioned that they have a problem formulating the problem. As best understood, in the Opponent’s submissions, this comes from the difficulties in identifying the motivation to select the claimed parameter ranges on the face of the Specification itself.

36. The essence of the Opponent’s oral submissions on the matter, as best understood, could be summarised as paragraphs (a), (b), and (c) below.  I have also provided my comments with respect to these submissions.

37. (a) The reduction of HAZ is a well-known desirable outcome, however the claimed parameter ranges are arbitrary and the Specification does not provide motivation to select these parameter ranges.  Based on Table 1 on page 35a of the description (reproduced below), the required reduction of HAZ width to 27 mm or less (see the description at [0033d, 0034c, 0055-0056, 0067, and 0074-0075]) can be achieved using latter flashing velocity as low as 0.5 mm/sec which is well outside the claimed range of 2.1 mm/sec to 2.8 mm/sec.

100. I note that Table 1 represents the results from 10 welding tests referred to as Example 1 to Example 10.  There is no dispute that only Example 1 and Example 4 represent welding processes that are within the scope of claim 1.  From Table 1, it is clear that these two examples achieved the shortest HAZ width of all examples as well as the shortest softened width of all examples.  Hence, I can see a clear reason to set the welding parameters within the claimed ranges.

101. (b) Since the claimed parameter ranges are typical in the art, it is known that they will work.  Hence, when selecting these claimed ranges, there is a clear expectation of success and no further motivation is necessary.

102. It appears that when talking about success, the Opponent refers to successfully preforming flash butt welding on two pieces of steel rails.  This is also reaffirmed by the Opponent’s oral submissions that since the flash butt welding is a well-known method for welding steel rails, no motivation would be required to use it.  I consider that success and failure are to be defined with respect to solving the problem, hence such an interpretation of success would only be appropriate if “how to perform flash butt welding on two pieces of (high carbon) steel rails” is the proper formulation of the problem.  As discussed below, this is not the case.

103. (c) No problem is identified either in the evidence, or in the Specification with the use of high carbon steel.  In the Specification, the high carbon steel is a preferment as it could be seen from the first sentence of paragraph [0001], and paragraphs [0002, 0033, 0033c, 0034, and 0034b].

104. Paragraph [0001] was quoted above and I note that the second sentence introduces the high carbon steel not using the word “preferably”, but the word “particularly”.  I consider that this does not suggest a preferment, but narrowing the technical field that is broadly stated in the first sentence.  With reference to the Opponent’s oral submissions that the carbon content is a parameter that was considered and introduced in claim 1 with the only motivation to avoid the prior art, I note that paragraph [0001] was never amended and its present wording is the same as it was in the verified translation of the PCT pamphlet filed with the national phase entry of the international application.

105. Paragraph [0002] talks about the use of flash butt welding in general, it does not even mention rails.  Paragraphs [0033, 0033c, 0034, and 0034b] represent consistory clauses.  Indeed paragraphs [0033 and 0034] describe flash butt welding methods “of a pair of track rail steel pieces” without mentioning the carbon content and paragraphs [0033c and 0034b] further describe that a carbon content of 0.85% to 1.20% by mass is preferable.  However, I also note that paragraph [0032a] represents another consistory clause describing a flash butt welding method where the high carbon steel is mentioned explicitly:

“The present invention provides a flash butt welding method of a pair of track rail steel pieces, each of the track rail steel pieces containing 0.85 to 1.20 percent of Carbon by mass, the method comprising…”

106. In conclusion, I do not find the Opponent’s submissions on the problem helpful.

The formulation of the problem

107. In light of my discussion of the Specification above, in particular the second sentence of paragraph [0001], and the fact that the Specification devotes considerable attention to the structure of high carbon steel and the mechanism of creating the HAZ in such steel at paragraphs [0009-0017], on balance, I am satisfied that the Specification is directed to flash butt welding of rails made of high carbon steel.  Therefore based on the above, I could potentially formulate the problem as how to reduce the HAZ width and the softened width when flash butt welding steel rails containing 0.85 to 1.20 percent of Carbon by mass (what I refer to as high carbon steel), without unacceptable deterioration of the bending performance of the rails (see e.g. the Specification at [0005] quoted above).

108. Importantly in applying the test of Wellcome Foundation with respect to claim 1, the appropriate problem needs to be a problem that is solved by claim 1 over its entire scope.  I note that claim 1 defines a “flash butt welding method of a pair of track rail steel pieces, each of the track rail steel pieces containing 0.85 to 1.20 percent of Carbon by mass” without mentioning the reduction of the HAZ width or the softened width.  Instead, claim 1 defines the steps or processes comprised in the method, with the only parameter limitations being imposed on the latter flashing velocity (feature G) and the latter flash-off distance (feature I).

109. I consider that any implementation of the claimed method which (e.g. due to inappropriate selection of some additional welding parameters) does not result in successfully welded rails will be outside the scope of claim 1.  An implementation that does not result in welding the rails is not a proper “flash butt welding method” (see feature A) and will not achieve “forming a welded portion” (see feature F).  Given that, I need to decide whether features G and I are sufficient to achieve a reduction of the HAZ width and the softened width in the welded portion without unacceptable deterioration of the bending performance of the rails.

110. Dr Tawfik states:

“In my experience, the mechanical and metallurgical properties of the HAZ (including its width and the width of a softened zone within the HAZ) depend on properties of the flash butt welding process, such as the heat input and upset force … Further, at page 11, 3^rd paragraph, the ‘204 Application [D3] states that:

The reduced number of preheats, had a significant effect in lowering the total HAZ width of the weld because of the lower heat input. The HAZ width achieved by the trials for narrow welded rails was from 16 to 23mm compared with a HAZ width of 33 to 40mm for standard welded rails …” (Tawfik-2 at [85], emphasis in bold added)

“I note that none of claims 1 to 9 apply a limit in terms of a total time of the initial flashing time and the former flashing time… the ‘602 Application indicates that, in order to avoid a HAZ having an excessive width, the total time of the initial flashing time and the former flashing time needs to be between 20 seconds and 180 seconds.” (Tawfik-2 at [101], emphasis added)

“I also note that none of claims 1 to 9 constrain or even refer to other essential variables of the rail flash butt welding process, such as upset force, current, or flashing duration. Based on my own knowledge and experience, each of these variables contributes to the formation of the mechanical and metallurgical properties of the HAZ. Hence, merely specifying flashing velocity attributes without applying constraints to other essential variables which contribute to the formation of the mechanical and metallurgical properties of the HAZ does not and cannot ensure a weld joint providing a narrow HAZ width.” (Tawfik-2 at [102], emphasis added)

111. Dr Hellier disagrees:

“I do not agree with paragraphs [99] to [102] of the Second Tawfik Declaration. Specifically, in the context of the Nippon Application, it is clear to me that the total time range between 20 seconds and 180 seconds described in pages 22 to 23 of the Nippon Application is a preferable time range and not necessarily an essential time range which must be adhered too … Further, in my opinion, the variables (e.g., upset force, current, and flashing duration) are easily configurable to match the parameters defined in the claims of the Nippon Application.” (Hellier at [53], emphasis added)

112. Dr Komizo also disagrees:

“In the context of the Opposed Application, I understand that the objective is to reduce uneven wear and surface damage of rails by reducing the softened width in a welded portion. According to the Opposed Application, at paragraphs [0051] to [0053] and Figs. 4 and 5, it is the latter flashing velocity that affects the softened width and the HAZ width.

Referring to Tawfik’s statement in … [Tawfik-2 at [101] quoted above], I note that paragraph [0043] of the Opposed Application clearly describes the total time limitation of ‘20 seconds to 180 seconds’ to be preferable ranges and such ranges are described in relation to an exemplary embodiment. Further, the lower time limit (i.e., 20 seconds) is simply described to be for ‘efficiently’ carrying out the preheating process.

Referring to Tawfik’s statement in … [Tawfik-2 at [102] quoted above], based on my experience and understanding, I do not see those parameters to be features that are required for the invention defined in the claims of the Opposed Application to address the above-stated objective. Starting from the conditions specified in the claims of the Opposed Application, I, or any other experienced person in the art, would be able to configure the other parameters of flash butt welding such as the upset force, the current, and the flashing duration.” (Komizo at [10-12])

113. In his evidence in reply, Dr Tawfik reiterates his views and also states:

“I further consider that a latter flashing process having a latter flashing velocity of 2.1 mm/sec to 2.8 mm/sec could actually contribute to a relative increase in HAZ width, since the mechanical and metallurgical properties of the HAZ also depends on the total heat input during the flash butt welding process, which in turn depends on other rail flash butt welding process parameters, such as, the number of preheating cycles and the upset force/travel, and the size and grade (chemical composition) of the rail steel.” (Tawfik-3 at [83], emphasis added)

114. The emphasised statement above appears similar to Dr Komizo’s:

“Prior to reading the Opposed Application, I also expected that an increase in flashing velocity would mean a relative increase in heat input, which in turn would result in a broader HAZ width.

However, from reading the Opposed Application, I was made aware of the correlation between latter flashing velocity and the HAZ. Unexpectedly and contrary to my previous experience as mentioned above, I was taught by the Opposed Application that an increased latter flashing velocity would in fact cause a decreased HAZ width.” (Komizo at [61-62], emphasis added)

115. The Specification indeed indicates (see e.g. Figures 4, 6A-B, 10, 12, and 13; Table 1; and the corresponding explanations) that a proper selection of the latter flashing velocity and the latter flash-off distance in accordance with features G and I of claim 1 results in reduction of the HAZ width and the softened width.

116. While I can understand Dr Tawfik’s views about the variety of welding parameters affecting the weld, and hence the HAZ properties, I also note his statement that “[t]he particular velocities which are achieved during flashing have widely understood relationships with machine, material and welding parameters” (Tawfik-2 at [71]).  Therefore, it appears to me that the other welding parameters are not completely independent of the latter flashing velocity and the latter flash-off distance, if a successful welding of high carbon steel rails is to be achieved as defined in claim 1.  I note that Dr Tawfik has not provided a specific example (real or theoretical) where the method defined in claim 1 is employed to produce a weld which does not have a reduced HAZ width and softened width (in comparison with the standard techniques discussed in the background of the Specification).

117. Both Dr Hellier and Dr Komizo suggest that once the latter flashing velocity and the latter flash-off distance are set, the other welding parameters can be easily configured (see the above quotations).  Dr Tawfik also states:

“It was well known to me and others in the field that track rail steel pieces which contain Carbon (C): 0.85% to 1.2% by mass could be flash butt welded by suitable selection of welding variables. The selection of these variables is a routine part of implementing a flash butt welding process for any steel grade.” (Tawfik-2 at [81], emphasis added)

118. Based on the evidence on file, on the balance of probabilities, I am not satisfied that features G and I are insufficient to achieve a reduction of the HAZ width and the softened width in a weld achieved by the method of claim 1.  The last column of Table 1 also indicates that the bending performance is not unacceptable, i.e. it is 19 mm or more (see paragraphs [0057-0058 and 0074] of the Specification).  Therefore I conclude that the potential problem I formulated earlier is a proper problem for the purposes of the test of Wellcome Foundation.

The person skilled in the art and the common general knowledge

119. The hypothetical “person skilled in that art” and the “common general knowledge” are well established concepts and I do not consider it necessary to discuss the relevant Authorities.

The person skilled in the art

120. The Opponent submits:

“The field of the invention at [0001] of the Opposed Application states that the invention relates to a flash butt welding method of rail steel. The person skilled in the art is drawn from a class of persons who are knowledgeable about and aware of developments in the field of flash butt welding.

The Opponent relies primarily on the evidence of Dr Tawfik. He has extensive qualifications and experience in engineering, design and materials technology holding, inter alia, a PhD in research related to flash butt welding techniques. He subsequently established his own consultancy firm and since 2010 has provided technical consulting services providing consulting to rail industry and passenger heavy haul sectors. His specialist areas of consultancy include assessing and investigating metallurgical and mechanical characteristics of rail flash butt welds and developing mobile flash butt welding programs…” (OS at [10-11], reference(s) omitted)

121. Regarding Dr Tawfik, the Applicant submits that “when assessing lack of inventive step, one needs to look at what information a craftsman would have before him, that craftsman not being of superior intelligence or capable of invention” (AS at [240], original emphasis), hence:

“The Applicant submits that Dr. Tawfik, to say the least, is a person of superior intellect and is remote from the ‘skilled addressee’ of Section 7 of the Australian Patents Act. Accordingly, Dr. Tawfik is not in a position to provide this Hearing with Evidence in respect of common general knowledge as his common general knowledge will likely extend beyond that of the person skilled in the art.” (AS at [244])

122. The Applicant relies on two experts, Dr. Komizo and Dr. Hellier, and states that:

“Dr. Komizo has a doctorate in engineering with expertise in metallurgy and welding. Dr. Komizo was a Professor at the Joining and Welding Research Institute, Osaka University, Japan, and had before the relevant priority date extensive knowledge and experience in relation to welding of rails (Komizo, paras. [2] to [4]). It is plain that Dr. Komizo had the requisite knowledge and experience before the relevant priority date to be a skilled addressee for the Opposed Application.

Dr. Hellier has a doctorate in metallurgy and had before the relevant priority date extensive knowledge and experience in welding of rails (Hellier, [l] to [6]). In particular, Dr. Hellier has been involved in numerous projects and papers related to rails, especially heavy haul rails. It is plain from Dr. Hellier's curriculum vitae (Exhibit AKH-1) that he had the requisite knowledge and experience before the relevant priority date to be a skilled addressee for the Opposed Application.” (AS at [17-18], emphasis added)

123. I note that in light of the above quotations, the Applicant’s submissions with respect to Dr Tawfik appear inconsistent.  In addition, I do not agree that, in view of the problem identified above, the person skilled in the art would be the person operating the welding machine as apparently suggested by the Applicant during the hearing.

124. I consider that the person skilled in the art would have engineering, metallurgy, material science, or similar qualifications combined with knowledge and experience in the process of flash butt welding of steel rails, including the mechanisms affecting the HAZ, the softened width, and the bending performance.  I conclude that all three experts are qualified to provide evidence in this opposition.

The common general knowledge

125. With respect to the common general knowledge in the art, the Opponent submits that:

“There is no dispute as to the common general knowledge in the field and the process of flash butt welding per se.” (OS at [12])

126. Dr Tawfik states:

“… rail flash butt welding is the most commonly used approach in Australia, and elsewhere, and has been for decades.” (Tawfik-1 at [23])

“In my experience, key elements of rail flash butt welding are as follows:
(a) a pre-flashing stage;
(b) a pre-heating stage following the pre-flashing stage;
(c) a flashing stage following the pre-heating stage; and
(d) an upsetting stage following the flashing stage.” (Tawfik-1 at [27])

127. With respect to the flashing stage (what I referred to as the final flashing process), Dr Tawfik explains that:

“The flashing stage occurs after the pre-heating stage and involves continuously feeding the rail ends together. Voltage applied to the rails during the flashing stage produces a flashing or arcing across the two ends of the rails as the rail ends are fed together. This flashing occurs progressively and continuously between the rail ends during the flashing stage”. (Tawfik-1 at [34])

“I note that different types of feed rate motion may be used during the flashing stage. In particular, the feed rate motion may involve a ‘flashing velocity’ which may involve a linear motion type characteristic in which the velocity remains constant, or a motion in which the flashing velocity accelerates.

One commonly used acceleration approach which I am well aware of is to increase the feed rate associated with flashing prior to the application of the substantial forging force associated with the upsetting stage. An example of this type of velocity increase which I am aware of is an increase associated with a parabolic type increase in displacement with time over all or a portion of the travel during flashing prior to the upset stage.” (Tawfik-1 at [37-38], emphasis added)

128. Neither Dr Hellier nor Dr Komizo expressly disagrees with Dr Tawfik on the question of what constitutes the common general knowledge.  Additionally, Dr Hellier states:

“Also, in general, it is my understanding that high-carbon-content steel is used in heavy haul rails as it can withstand greater axle loads. For general railways, it is sufficient to use standard carbon rails with eutectoid composition (0.8wt% C).” (Hellier at [54])

129. Dr Komizo mentions that:

“In flash butt welding in general, I am well aware of the risk of an unnecessarily high flashing velocity as it can result in failures in the weld joint...

To my knowledge, and also as described in paragraph [0005] of the Opposed application, when freezing occurs, oxides are generated that deteriorate the bending performance. If an exceeding amount of oxides are contained around the weld junction, this causes small defects in the steel that can become starting points of fractures such that the risk of fracture generations is increased. These potential failure areas may not be readily found during inspections and thus exceeding oxide contamination in rail products can be particularly dangerous. Moreover, in high-carbon-content steels (e.g., steels containing Carbon: 0.85% to 1.2% by mass), small defects caused by oxides would initiate fractures at a higher probability since the steel have lower toughness. The bending performance would also be considerably lower. Therefore, in high-carbon content steels, the negative aspects of freezing become more prevalent.” (Komizo at [59-60])

130. Based on the evidence on file and relevantly to this opposition, I consider that the following constitutes part of the common general knowledge:

• The use of the flash butt welding method with its steps as described by Dr Tawfik for welding steel rails, including high carbon steel rails;
• The fact that the flashing velocity can be increased, including in a way that the “displacement vs time” curve could be modelled as a parabola;
• The fact that high carbon steel rails are commonly used, in particular for heavy haul trains.

Is claim 1 obvious?

131. The Opponent’s primary submissions on obviousness are that the claimed invention does not involve an inventive step in light of the common general knowledge together with each one of documents D1 to D6.  During the hearing, the Opponent submitted that the most relevant documents with respect to inventive step are D3, D2, and D6.  I will discuss these documents before considering the remaining documents D1, D4, and D5.

D3 together with the common general knowledge

132. The abstract of D3 reads:

“A steel rail comprises a plurality of individual rails joined by flash butt welding. The width of the heat affected zone (HAZ) between neighbouring welded rails at the load bearing surface of the rail is less than 30mm; preferably less than 25mm.”

133. At pages 1 to 6, D3 discusses the flash butt welding of rails in general, the negative effects of HAZ, and that “[a]t the present time, the width of the HAZ region of a flash butt welded rail on the load bearing surface of the rail is typically between 35 and 40mm” (see page 5).  In this context, as already mentioned with respect to novelty, D3 discloses (see page 3) that “[t]he movable platen of the welding machine during this stage is generally accelerated parabolically”, and that “[a] total flashing distance of between 10 and 15mm, over a period of 5 to 10 seconds is typically employed”.

134. Having discussed the background, D3 states on page 6 that “the invention provides a flash butt welded steel rail in which the width of the heat affected zone (HAZ) of each or a majority of welds is less than 30mm; preferably less than 25mm”.

135. Importantly, this reduction of HAZ is achieved “through the application of a higher forging load and reduced number of preheats” (page 10) where “[t]he reduced number of preheats, had a significant effect in lowering the total HAZ width of the weld because of the lower heat input” (page 11).

136. Dr Tawfik also confirms that:

“In particular, the ‘204 Application [D3] describes a rail flash butt welding process involving a high forging load combined with a reduced number of pre-heating stages to reduce the width of the heat affected zone of the resultant weld.” (Tawfik-2 at [30])

137. Optimisation of the parameters of the final flashing process is not contemplated in D3, hence I consider that although D3 is concerned with a similar problem to the one I identified earlier, the solution proposed in D3 is different to the claimed invention.

138. In their combined submissions on obviousness in light of D1 or D3 at section I4 on page 23 of the Opponent’s Summary, the Opponent states:

“The person skilled in the art taking the disclosure of D1 [or D3] is taught to focus within the range specified by that document. They are taught that the profile is parabolic meaning the latter flashing velocity will be greater than the former. They are also given a typical operating range and given the acceleration profile described they would have a reasonable expectation that all the process parameters in that range would be suitable for that process.

A routine choice of either 9mm [10 mm in case of D3] over 5s or 15mm over 10s accelerated in a parabolic manner would provide a latter flashing velocity of 2.7mm/.s [sic] and 2.25 mm/s respectively. The choice would also result in the equation defined as Feature I being fulfilled.” (OS at [121-122])

139. Even if I assume that selecting 10 mm over 5 seconds or 15 mm over 10 seconds would result in a method within the scope of claim 1, given the disclosure of D3 as discussed above, I can see no evidence that the person skilled in the art in seeking solution to the problem formulated earlier, will be motivated to make a “routine choice” of 10 mm over 5 seconds or 15 mm over 10 seconds in the expectation that this may well solve the problem.  The “reasonable expectation that all the process parameters in that range would be suitable for that process” (i.e. for the final flashing process of the flash butt welding of rails) simply means that regardless of the particular selected parameters within the ranges, the selection is likely to result in welded rails.  Since the identified problem is much narrower than just welding the rails, I do not consider this to be relevant to the solution of the problem.

140. I am unable to identify any suggestion in D3 or in the evidence that could lead to the conclusion that the person skilled in the art would select any particular values within the disclosed typical parameter ranges with a reasonable expectation to successfully solve the problem.  Based on the evidence on file, on the balance of probabilities, I am not satisfied that the invention defined in claim 1 is obvious in light of the common general knowledge together with document D3.  

D2 together with the common general knowledge

141. With respect to this document, Dr Tawfik states that “[t]he ’514 Patent [D2] describes methods for conducting flash butt welding” (Tawfik-2 at [16]) and continues:

“In particular, the ‘514 Patent describes the use a controller including a PID feedback loop for maintaining the predetermined platen distance/velocity relationship in a flash butt welding cycle including the stages discussed at paragraph [17] above.” (Tawfik-2 at [18])

“At column 10, lines 18 to 22, the ‘514 Patent describes the final flashing process as:

After the final preheat, the movable platen 30 closes the gap between the rail ends 20 and 20'a at a high velocity until a current draw is detected from either the upper or lower welding power supply current transformers 54 and 58.

Also, at column 10, lines 40 to 45, the ‘514 Patent discusses:

As final flashing is initiated, the platen velocity is slow to eliminate any jagged ends left from the pre-heating phase. The platen velocity will then increase parabolically to the upset point. The result is an accelerated platen velocity that teaches or adapts itself to any particular rail section and chemistry.

I understand, in the context of the ‘514 Patent, that the ‘final flashing’ involves a flashing stage in which the ends of the rails are moved towards one another at an increasing velocity which is governed by a parabolic rate for a pre-set flashing distance.” (Tawfik-2 at [22-23], original emphasis)

142. With respect to the obviousness in light of D2, the Opponent submits:

“D2 discloses the latter flashing velocity by means of a graph [Figure 3B] drawn to scale and it discloses a latter flashing velocity at around the mid-point of the range claimed in the Opposed Application [feature G of claim 1]. D2 provides a teaching that an average flash velocity of 2.4 mm/sec in the latter stage is suitable in flash welding process. This velocity over a latter flashing distance of 14.2mm falls within the equation specified in claim 1 [feature I] …

Furthermore, in the event that it is suggested that the particular type of rail steel confers an inventive step, there is no advance in applying D2 to a particular and commonly available form of rail steel. D2 is taught as equally applicable to all types of rail steel and, in particular, would be understood as applying to commonly available rail steel.” (OS at [124-125])

143. As I already discussed with respect to novelty, I do not consider that features G and I of claim 1 are disclosed in D2.  In addition, D2 is mainly concerned with the control of the process via a feedback signal so that “high quality welds may be repeatably obtained in production rail welding” (column 11, lines 8-9).  There is insufficient evidence for me to conclude that the person skilled in the art, in seeking solution to the identified problem, would be motivated to set the welding parameters of the method of D2 in such a way as defined in claim 1.

144. Based on the evidence on file, on the balance of probabilities, I am not satisfied that the invention defined in claim 1 is obvious in light of the common general knowledge together with document D2.

D6 together with the common general knowledge

145. As stated by Mr Thornton:

“Exhibit JGT-1 [D6] is a copy of Nortrak work order documents for Work Order Number 201037779 created on 25 January 2008 for producing twenty four rail lengths by flash butt welding…” (Thornton at [7])

“Work Order Number 201037779 was issued to fulfil the requirements of a sales order for Union Pacific Railroad placed with Nortrak.” (Thornton at [9])

146. Subsection 7(3) was quoted earlier and it refers to “prior art information”. Following the Dictionary provided in Schedule 1 of the Act:

“ ‘prior art information’ means:
…

(b)  for the purposes of subsection 7(3)--information that is part of the prior art base in relation to deciding whether an invention does or does not involve an inventive step; and

…” (emphasis in bold added)

“ ‘prior art base’ means:

(a)  in relation to deciding whether an invention does or does not involve an inventive step or an innovative step:
         (i)  information in a document that is publicly available, whether in or out of the patent area; and
         (ii)  information made publicly available through doing an act, whether in or out of the patent area.
…” (emphasis in bold added)

147. Therefore, the information contained in D6 must be publicly available for it to be considered under subsection 7(3).  The Applicant submits that this is not the case:

“There is no indication in D6 (Exhibit JGT-1 ), or in any evidence provided by the Opponent, that D6 (Exhibit JGT-1) was published on a specific date. The creation date of 25 January 2008 appears to be the date on which D6 (Exhibit JGT-1) was created and does not indicate when D6 (Exhibit JGT-1) was published. Additionally, Mr. Thornton in Thornton, paras. [4] and [6] states:

‘As a result of my role as Quality Assurance Manager, I have access to Nortrak's production records […]

Between late 2007 and early 2008, Nortrak commenced scanning complete work order documents, including the work order and inspection test plans, for all flash butt welded products that were controlled with a serial number and had an inspection test plan. These scanned records were and are stored in electronic format as a “.pdf” file on Nortrak's servers’

From Mr. Thornton's statement above, it appears that D6 (Exhibit JGT-1) was internally stored on Nortrak's servers and Mr. Thornton as an employee of Nortrak had access to those servers. However, there is no evidence to establish that D6 (Exhibit JGT-1) was taken from Nortrak's servers and then published so that a member of the public was free, in law and equity, to make use of the information in D6 (Exhibit JGT-1).” (AS at [197-198], original emphasis)

148. During the hearing, the Opponent referred to Ronneby Road Pty Ltd v ESCO Corporation [2016] FCA 588 (Ronneby), in particular to paragraph [43], to support their submissions that the customer Union Pacific Railroad was under no confidentiality obligations, hence D6 was publicly available.

149. I note that at [39] of the Ronneby decision, Jessup J provided a helpful case law summary on the matter of public availability; however as it will become apparent later in this decision, due to the nature of the information contained in D6 and the evidence on file, I do not need to decide conclusively the issue of whether the information in D6 was publicly available.

150. With respect to the obviousness of claim 1, the relevant parts of D6 are the two welding charts presented on the last two pages (referred to by Mr Thornton as pages 17 and 18).  Mr Thornton explains:

“In 2005 Nortrak purchased a weld analyzer (from Holland Company) for logging variables during rail flash butt welding operations. The weld analyzer records data for the variables and produces weld charts representing that data.” (Thornton at [5])

“The weld charts depicted at page 17 of the Work Order Documents comprise a log produced during the flash butt welding operation by the weld analyzer referred to at paragraph [5] above for weld number 80917 of rail number 8 on the L32-01523 inspection and test plan checklist. These charts depict relationships between variables of the stages of the flash butt welding operation used to form the weld between the 115RE HH OCP/HE-X (material number S36-05301) rail and the 136RE HH OCP/HE-X rail of rail number 8.” (Thornton at [12])

“The weld charts depicted at page 18 of the Work Order Documents comprise a log produced during the flash butt welding operation by the weld analyzer referred to at paragraph [5] above for weld number 80918 of rail number 10 on the L32-01523 inspection and test plan checklist. This chart depicts relationships between variables of the stages of the flash butt welding operation used to form the weld between the 115RE HH OCP/HE-X (material number S36-05301) rail and the 136RE HH OCP/HE-X (material number S42-20103) of rail number 10.” (Thornton at [15])

151. Using the charts of D6, Dr Tawfik calculated that during the two welding processes represented by the two welding charts, the latter flashing velocities were 2.05 mm/sec and 2.04 mm/sec, respectively; and the latter flash-off distances were 8 mm and 10 mm, respectively (see Tawfik-3 at [70 and 75]).  These velocity values are clearly outside the range defined in claim 1 (feature G).  In addition, the Opponent accepts that the latter flash-off distances extracted from the charts do not satisfy the condition imposed by feature I of claim 1:

“The relevant equation from Feature I:

Example 1 [first welding chart]      60 mm ≥ 8mm ≥ 10.36
Example 2 [second welding chart] 60 mm ≥ 10mm ≥ 10.3” (OS at [108])

152. However the Opponent submits that:

“If the average velocity were increased slightly by 0.05mm/sec (being a slight increase of 2% within the margin of error of any such process) to 2.1 mm/sec, Feature I would be met for example 2:

Example 1      60 mm ≥ 8 mm ≥ 10 mm
Example 2      60 mm ≥ 10 mm ≥ 10 mm

Example 2 as shown directly above fulfilled Feature I.” (OS at [109-110]).

153. With respect to the obviousness in light of D6, the Opponent further submits that:

“If D6 only discloses a latter average flashing velocity which is marginally below the range of the claim of the Opposed Application then that is insufficient to confer inventiveness. If that average flashing velocity was increased by an insignificant margin of 0.05 mm/s then the use would fall directly within the scope of the claim.

A person skilled in the art seeing D6 would readily appreciate that the figures contained therein allowed for a margins in operation and would equally see a very slightly higher velocity of 2.1 mm/sec as providing a suitable flashing process. There is no difficulty overcome and no technical barrier crossed. The process defined by claim 1 is not inventive over D6.” (OS at [127-128], emphasis added)

154. Again, as discussed earlier, it appears that the “suitable flashing process” mentioned by the Opponent refers the suitability for welding rails (in this case, of high carbon steel).  While there may be no technical difficulty in selecting “a very slightly higher velocity of 2.1 mm/sec”, I must return to the test for inventive step as quoted above from Wellcome Foundation.

155. Even if I assume that D6 was publicly available, I am not presented with any evidence that the person skilled in the art, facing the identified problem, would as a matter of routine modify the process parameters that could be extracted from the welding charts of D6 in a way to reach the invention defined in claim 1.  Therefore, based on the evidence on file, on the balance of probabilities, I am not satisfied that the invention defined in claim 1 is obvious in light of the common general knowledge together with the information contained in document D6.

D1 together with the common general knowledge

156. During the hearing, the Opponent submitted that the teachings of documents D1 and D3 are similar (I also discussed this fact when considering novelty).  They also submitted that D3 is more relevant than D1, so that if I find the claimed invention not obvious in light of D3, then the invention would also be not obvious in light of D1.  The Opponent even mentioned that I do not need to consider these two documents separately.

157. I have already considered D3 and found that I am not satisfied that the invention defined in claim 1 is obvious in light of the common general knowledge together with document D3.  It follows that I am also not satisfied that the invention defined in claim 1 is obvious in light of the common general knowledge together with document D1.

D4 together with the common general knowledge

158. Regarding this document, Dr Tawfik comments:

“The DVS Paper [D4] is concerned with process monitoring of flash butt welding processes. In particular, the DVS Paper describes a process monitoring system (‘The WeldAnalyzer® system’) which detects, analyzes and monitors variables of the flash-butt welding process and records them in real time on a high-resolution display as a function of time.” (Tawfik-2 at [36]).

“… Figure 1 of the DVS Paper shows, over a flashing distance of 17.2 mm, a begin travel velocity of 0.20 mm/sec, and an end travel velocity of 2.35 mm/sec. Accordingly, the DVS Paper discloses a latter flashing process which includes in it a period of acceleration immediately prior to commencement of the upset stage having an average velocity which falls within the range of claim 1.” (Tawfik-2 at [77], emphasis added)

“I consider that Fig.1 of Exhibit DT-6 [D4] clearly discloses a final flashing velocity of 2.35 mm /sec prior to the commencement of the upset stage. I further consider that Fig.1 of Exhibit DT- 6 also clearly discloses an initial flashing velocity of 0.20 mm/sec. Since, Fig.1 of Exhibit DT- 6 involves an acceleration from 0.20 mm/sec to 2.35 mm /sec, I consider that it is inevitable that there will exist in the final flashing stage a period prior to the commencement of the upset stage in which an average or instantaneous velocity is equal to or greater than 2.1 mm/sec. It is thus clear to me that this period is in a latter period of the flashing process depicted in Fig.1 of Exhibit DT-6…

… I note that there is no feature in claim 1 of the ‘602 Application which stipulates a time duration requirement for a latter flashing velocity in the latter flashing process (my emphasis).” (Tawfik-3 at [55-56], bold emphasis in the original, italic emphasis added)

159. I note that Dr Tawfik’s evidence regarding D4 is based entirely on the specific construction of the term “latter flashing velocity” as used in claim 1.  I have already discussed this issue and did not consider this specific construction valid.

160. The Opponent’s combined submissions regarding obviousness in light of D4 or D5 state:

“Each of D4 and D5 disclose instantaneous final flashing velocities which are in the region of 3mm/s at the commencement of the upset phase. There is no advance in specifying an average velocity in this phase of between 2.1 mm/s and 2.8mm/s.” (OS at [126])

161. Again returning to the test for inventive step of Wellcome Foundation, even if I assume that D4 was publicly available (the Applicant does not agree that this is the case), I am not presented with any evidence that the person skilled in the art, facing the identified problem, would as a matter of routine modify the process parameters that could be extracted from D4 in a way to reach the invention defined in claim 1.  Therefore, based on the evidence on file, on the balance of probabilities, I am not satisfied that the invention defined in claim 1 is obvious in light of the common general knowledge together with the information contained in document D4.

D5 together with the common general knowledge

162. In commenting on D5 with respect to claim 1, Dr Tawfik apparently applies the same specific construction of the term “latter flashing velocity” as he does when commenting on D4: 

“… it is clear to me that that a latter flash-off distance of the latter flashing process is approximately 10 mm. In this case, the latter flash-off distance is the full extent of the latter flashing process and over this extent the ‘erosion rate’ has an average value of 1.25 mm/sec (that is, 10 mm / 8 seconds).

It is clear from inspection of the enlarged partial reproduction of the weld chart of Exhibit DT-7 [D5] presented below, that either an instantaneous or average latter flashing velocity occurs in the latter flashing process which is in the range 2.1 mm/sec to 2.8 mm/sec prior to the commencement of the upset stage. Indeed, I note that the enlarged partial reproduction in paragraph [49] of the Komizo Declaration specifically identifies periods in the latter flashing process in which an average latter flashing velocity is 2.1 mm /sec to 2.8 mm/sec prior to the commencement of the upset stage.” (Tawfik-3 at [63-64], emphasis added)

163. This is also confirmed by the combined Opponent’s submissions on obviousness in light of D4 and D5, quoted above.

164. Similarly to the case of D4, even if I assume that D5 was publicly available (the Applicant again does not agree that this is the case), I am not presented with any evidence that the person skilled in the art, facing the identified problem, would as a matter of routine modify the process parameters that could be extracted from D5 in a way to reach the invention defined in claim 1.  Therefore, based on the evidence on file, on the balance of probabilities, I am not satisfied that the invention defined in claim 1 is obvious in light of the common general knowledge together with the information contained in document D5.

Inventive step conclusion

165. I did not find that claim 1 is obvious in light of the common general knowledge together any one of the documents relied on by the Opponent (D1 to D6).  It follows that I did not find that claim 1 is obvious.  Claims 2 and 3 add further features to the features defined in claim 1, hence I have no reasons to consider any of these claims obvious.

166. In conclusion, I have not established that any one of the claims of the Application is obvious and does not involve an inventive step.

Disclosure, support, and usefulness

167. In my view, my previous discussions related to the problem solved by the Application are also highly relevant to the issues I will consider in this part of my decision.  I have already discussed at some length the Specification as well as the invention defined in claim 1 and the relevant evidence in the sections “What the Specification describes as the problem” and “The formulation of the problem”.  For brevity, in what follows, I will refer to these discussions without repeating them.

Clear enough and complete enough disclosure under paragraph 40(2)(a)

168. Subsection 40(2) states:

“A complete specification must:
          (a)  disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art …”

169. The intention behind this part of the legislation is explained in the Explanatory Memorandum accompanying the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (emphasis added, reference(s) removed):

“This is intended to align the disclosure requirement with that applying in other jurisdictions with the effect that sufficient information must be provided to enable the whole width of the claimed invention to be performed by the skilled person without undue burden, or the need for further invention.

…

The person reading the specification is assumed to have reasonably competent knowledge of and skill in the relevant technical field.

…

The intention is that paragraph 40(2)(a) be given, as close as is practicable, the same effect as the corresponding provisions of UK legislation and the European Patent Convention.

…

If, on its face, the specification would appear to the skilled person to lack sufficient disclosure, the onus of establishing that the invention is described in enough detail lies with the applicant…”

170. The test for clear enough and complete enough disclosure was discussed in Kirin-Amgen Inc and others v Hoechst Marion Roussel Limited and others [2004] UKHL 46; (2005) RPC 9 at [103]:

“Whether the specification is sufficient or not is highly sensitive to the nature of the invention. The first step is to identify the invention and decide what it claims to enable the skilled man to do. Then one can ask whether the specification enables him to do it.”

171. The Opponent specifically discusses the issue of disclosure with respect to claims 1 and 3 (see sections J1.1 and J1.2 of the Opponent’s Summary).

172. With respect to claim 1, the Opponent states:

“The evidence of Dr Tawfik in TAWFIK #3 [84] states that:

‘In my view, there is no disclosure in the specification of the ‘602 Application which provides any guidance whatsoever as to how to set all of the essential control parameters of the type listed in Fig.3 from Exhibit DT-6, and thus I consider that the ‘602 Application does not provide me with sufficient information in relation to how to reliably perform a rail flash butt welding process, let alone form a rail flash butt weld having particular mechanical and metallurgical properties.’

The evidence shows that a skilled person is confronted with a choice of control variables that may be implemented to affect the claimed process. Despite this, the specification provides no sufficient guidance enabling him or her to properly adjust the multitude of process steps in order to arrive at a reliable rail flash butt weld.” (OS at [142-143], original emphasis)

173. My previous discussion of the evidence suggests that:

“… the variables (e.g., upset force, current, and flashing duration) are easily configurable to match the parameters defined in the claims of the Nippon Application.” (Hellier at [53])

“Starting from the conditions specified in the claims of the Opposed Application, I, or any other experienced person in the art, would be able to configure the other parameters of flash butt welding such as the upset force, the current, and the flashing duration.” (Komizo at [12])

“It was well known to me and others in the field that track rail steel pieces which contain Carbon (C): 0.85% to 1.2% by mass could be flash butt welded by suitable selection of welding variables. The selection of these variables is a routine part of implementing a flash butt welding process for any steel grade.” (Tawfik-2 at [81])

174. I have already discussed the invention defined in claim 1.  I consider that it claims to enable the skilled person to perform flash butt welding of a pair of track rail steel pieces, each of the track rail steel pieces containing 0.85 to 1.20 percent of Carbon by mass, by implementing the defined processes, and using a latter flashing velocity according to feature G and a latter flash-off distance according to feature I.   

175. Based on the evidence on file, on the balance of probabilities, I am not satisfied that the Specification does not enable the person skilled in the art to do so.

176. With respect to claim 3, which additionally claims to enable the skilled person to achieve a HAZ width of 27 mm or less and a softened width of 10 mm or less, the Opponent again relies on the evidence by Dr Tawfik :

“The evidence of Dr Tawfik in TAWFIK #3 [81] states that:

‘In my view, it is not possible to achieve a reduction in HAZ width without characterising process parameters of each of the interdependent rail flash butt welding processes, since each of the processes parameters contributes to the formation of the mechanical and metallurgical properties the HAZ, as is explained at paragraphs [42] to [47] of my First Declaration.’

The evidence of Dr Tawfik in TAWFIK #3 [83] further states that:

‘I further consider that a latter flashing process having a latter flashing velocity of 2.1 mm/sec to 2.8 mm/sec could actually contribute to a relative increase in HAZ width, since the mechanical and metallurgical properties of the HAZ also depends on the total heat input during the flash butt welding process, which in turn depends on other rail flash butt welding process parameters, such as, the number of preheating cycles and the upset force/travel, and the size and grade (chemical composition) of the rail steel.’

The evidence of Dr Tawfik in TAWFIK #3 [84] further states that:

‘… the ‘602 Application does not provide me with sufficient information in relation to how to reliably perform a rail flash butt welding process, let alone form a rail flash butt weld having particular mechanical and metallurgical properties.’” (OS at [146-148], original emphasis)

177. In response, the Applicant refers to the Specification at [0039, 0042, 0049, and 0072] for the description of “the use of various preferred process variables that are utilised in the disclosed embodiments” (AS at [271]).  The Applicant also refers to various parts of Dr Tawfik’s evidence to show that “the process variables are widely known and used in the normal operation of a flash butt welding process” (AS at [275]) and that “the process variables are changed on a case-by-case basis depending on different circumstances, such as different welding machines used to carry out the flash butt method” (AS at [275]).

178. I note that the Specification describes examples that achieve the claimed values of HAZ width and softened width (see e.g. Figures 4, 6A-B, 10, 12, and 13; Table 1; and the corresponding explanations).  The evidence suggests that selecting appropriate welding parameters is a routine task, hence I consider that the skilled person would be able to make any adjustments that may be necessary (e.g. due to the use of different welding equipment) to adapt the described welding method achieving the claimed values “without undue burden, or the need for further invention”.

179. Based on the above, on the balance of probabilities, I am not satisfied that the Specification does not enable the person skilled in the art to perform the method defined in claim 3.

180. In conclusion, on the balance of probabilities, I am not satisfied that the Specification does not disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art.

Claim support under subsection 40(3)

181. Subsection 40(3) states:

“The claim or claims must be clear and succinct and supported by matter disclosed in the specification.”

182. The intention behind this part of the legislation is explained in the Explanatory Memorandum accompanying the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (emphasis added):

“Broadly speaking, the terms ‘support’ and ‘full support’ pick up two concepts:

·there must be a basis in the description for each claim; and

·the scope of the claims must not be broader than is justified by the extent of the description, drawings and contribution to the art.

…

This item is intended to align the Australian requirement with overseas jurisdictions’ requirements (such as the UK). Overseas case law and administrative decisions in respect of the ‘support’ requirement will be available to Australian courts and administrative decision-makers to assist in interpreting the new provision.”

183. In Generics (UK) Limited and others v H Lundbeck A/S [2009] UKHL 12 at [36], a decision by the EPO Technical Board of Appeal was quoted with approval:

“This means that the definitions in the claims should essentially correspond to the scope of the invention as disclosed in the description. In other words … the claims should not extend to subject-matter which, after reading the description, would still not be at the disposal of the person skilled in the art.”

184. I have already established that I am not satisfied that the Specification does not disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art.  Since my discussion was based entirely on the disclosure in the body of the Specification, it follows that I consider that there is “a basis in the description for each claim” (while I did not specifically address claim 2, my discussion with respect to claim 3 apples equally, mutatis mutandis, to claim 2).

185. The Opponent submits:

“The Opposed Application teaches as an invention the use of an increased latter flashing velocity to achieve a reduced HAZ width. This is the technical contribution to the art.

Whilst the specification of the Opposed Application discloses particular latter flashing velocities, it is apparent from the evidence that use of an increased latter flashing velocity does not guarantee a reliable flash butt weld, let alone a flash butt weld having particular mechanical and metallurgical properties.” (OS at [154-155], reference(s) omitted)

186. I note that when discussing the evidence in section “The formulation of the problem”, I reached a different conclusion.  The Opponent continues:

“Paragraph [0043] of the Opposed Application states:

‘The total time necessary for the initial flashing process (initial flashing time) and a time necessary for the forming flashing process (former flashing time) is preferably 20 seconds to 180 seconds. In order to efficiently carry out the pre-heating process which is subsequently carried out, it is necessary to make the end surfaces perpendicular in the initial flashing process, and when the time is too short, it is difficult to obtain the effects, and the total time needs to be 20 seconds or more. In addition, when the total time of the initial flashing and the former flashing time is too long, the HAZ width becomes excessively wide, and the initial flashing time and the former flashing time is preferably 180 seconds or less. (emphasis added).’

Paragraph [0048] of the Opposed Application further states:

‘Meanwhile, when the latter flashing velocity is simply increased, freezing, which acts as a cause of a welding defect, occurs as described above. Therefore, with regard to the heat input amount before the latter flashing velocity is increased, a flashing time and the number of preheating processes, which are preferable so that the latter flashing process can be begun at an increased latter flashing velocity, and, even in the subsequent processes, the latter flashing is stabilized and maintained, are set. (emphasis added)’

Based on what is disclosed in the Opposed Application, it is unpredictable whether a flash butt weld having a reduced HAZ width will be achieved.

It follows that the scope of the claims is not supported by the technical contribution to the art since the technical contribution to the art is more limited than the scope of the claims.” (OS at [156-159], original emphasis)

187. It appears that the Opponent considers that certain additional technical limitations are required for the working of the invention, however they are not present in the claims.  I note that the parameters mentioned in the parts of the Specification quoted by the Opponent are consistently introduced as preferable.  This is also the understanding of Dr Hellier and Dr Komizo (see Hellier at [53] and Komizo at [11] as quoted above).  On the balance of probabilities, I am not satisfied that the claims are not supported by matter disclosed in the body of the Specification.

Usefulness under paragraph 18(1)(c)

188. It is well established that the claimed invention is useful if it achieves the promised benefit over its entire scope.  The Opponent submits:

“It follows that if it be accepted that that [sic] use of an increased latter flashing velocity does not guarantee a reliable flash butt weld, let alone a flash butt weld having particular mechanical and metallurgical properties, it will follow that claims 1 to 3 of the Opposed Application include within their scope an inoperative combinations which do not produce the result claimed by the Opposed Application.” (OS at [161], emphasis added)

189. Based on my earlier discussions with respect to the problem solved by the claimed invention, I consider that the reduction of the HAZ width and the softened width is the promised benefit.  I have already concluded that this reduction is achieved over the entire scope of claim 1.  Therefore, on the balance of probabilities, I am not satisfied that claim 1 is not useful.  

190. Claims 2 and 3 add further features to the features defined in claim 1, therefore I have no reasons to consider any of these claims not useful.

Conclusion and Costs

191. I did not find that any one of the claims of the Application lacks novelty or inventive step.  I also did not find that there is lack of clear enough and complete enough disclosure, claim support, or usefulness.  It follows that the opposition is unsuccessful on all grounds. 

192. It is a normal practice that the cost should follow the event.  However, I note that the Applicant amended the claims after the end of the evidentiary period.  The Opponent states:

“The Application was amended after the completion of evidence. The Opponent therefore seeks its costs whether or not the delegate upholds the Opposition on the present claims.” (OS at [163])

193. At the hearing, the Opponent further clarified that due to the amendment they had “a measure of success”, hence even if the opposition is unsuccessful, they would be entitled to their costs or at least there should be no cost order against them.

194. On the other hand, the Applicant “seeks dismissal of the Opposition with costs” (AS at [289]).  At the hearing, the Applicant submitted that after the amendments were allowed, the Opponent has had the opportunity to withdraw the opposition and avoid the costs of the hearing.

195. Although I can appreciate the Applicant’s point, I note that the costs for preparing the evidence were already incurred by the Opponent at the time the amendment was filed.  In addition, I consider that a proposal to amend the Specification (in the way it was done) after the evidence is filed, creates a prima facie case that the Applicant admits the likelihood of a successful opposition.

196. In view of the above, I consider fair to both parties to award costs according to Schedule 8 up to the date of filing the request to amend the Specification against the Applicant; and to award costs according to Schedule 8 from the date of filing the request to amend the Specification against the Opponent.

Dr V. Z. Kolev
Delegate of the Commissioner of Patents