Intelligent Robotics Pty Ltd v Scott Automation & Robotics Pty Ltd [2026] APO 5

The Applicant is given 2 months to amend the specifications to overcome the lack of support.

1. Patent application 2016429338 (the standard application) in the name of Scott Automation & Robotics Pty Ltd (the Applicant) is the national phase entry of PCT/AU2016/051279 (publication number WO 2018/085879 A1) which claims priority from AU 2016904561 with a priority date of 9 November 2016.

1. The Application was accepted on 25 May 2023 and acceptance advertised on 8 June 2023. A notice of opposition was filed by Intelligent Robotics Pty Ltd (the Opponent) on 8 September 2023. A Statement of Grounds and Particulars was filed on 8 December 2023.

1. Evidence in support was filed on 8 March 2024. No evidence in answer was filed.

1. Amendments were filed on 23 July 2024. The amendments were allowed on 31 January 2025.

1. Innovation patent 2023100082 (the innovation patent) is the divisional application of 2023226682 which is the divisional application of 2016429338 (the standard application).

1. The innovation patent was granted 18 October 2023 and certified on 12 March 2024.

1. On 20 March 2024 an opposition to the innovation patent was filed. A Statement of Grounds and Particulars was filed on 4 April 2024, together with evidence in support.

1. Amendments were filed on 23 July 2024 which were withdrawn on 3 September 2024 and replaced by new amendments. The new amendments were allowed on 12 February 2025.

1. On 14 March 2024 the Opponent requested that the opposition to the standard patent be joined with the (at that stage prospective) opposition to the innovation patent. On 26 April 2024 a direction was made that the oppositions are joined.

1. After the hearing, I sent a letter on 29 September 2025 stating:

On 29 March 2025 the Opponent requested "an opportunity to file further evidence".

On 30 June 2025 the Opponent filed a revised declaration by Koorosh Khodabandehloo.

On 22 August 2025 the Opponent filed another declaration by Koorosh Khodabandehloo.

On 8 August 2025 a Delegate advised that the hearing officer would decide whether to rely on the revised Koorosh Khodabandehloo declaration under reg 5.23.

The revised declarations were made in response to the amendments made to the claims during the evidentiary stages of the opposition. The nature of the amendments to the claims was to add the words "without any other stabilising element" to claim 1. Dependent claims were also added.

The new Koorosh Khodabandehloo declarations address the feature of "without any other stabilising element" highlighting that this was disclosed in FACCSA v1 but not in FACCSA v2. I note that this is point that had already been made in the first Koorosh Khodabandehloo declaration. For example, Mr Khodabandehloo states in his first declaration at paragraph 9:

The experience gained from operating FACCSA v1 showed that the combination solely of gravity and an inclined belt was sufficient to stabilise the carcass against forces exerted during vertical cutting.

Reiterating this point in the new declarations does not provide any substantially new information.

The new Koorosh Khodabandehloo declarations address the dependent claims added in the amendments, and specifically whether FACCSA v1 had these features. Information about the dependent claims will only be relevant if the independent claim is found to lack novelty or inventive step.

At this stage, I am of the preliminary view that there is insufficient evidence to establish that FACCSA v1 was publicly available and so am not presently satisfied that FACCSA v1 is prior art for the purposes of considering novelty and inventive step. Consequently, information regarding the dependent claims is not information that would be likely determinative of the opposition."

1. I did not seek responses from the parties on this issue, nor were any responses from the parties received on this issue. I remain of this view and consequently will not rely on the revised Koorosh Khodabandehloo declaration under regulation 5.23.

1. At the hearing the issue of the English translations of D6 and D7. The parties agreed that if the English translations of D6 and D7 were relied upon under reg 5.23, there was no need to have further rounds of responding information under reg 5.23(2)(c).

1. In the letter of 29 September 2025 I also stated:

On 4 September 2025 the Opponent filed English translations of D6 and D7, together with their written submissions for the hearing.

Because of the relevance of D6 to the determination of inventive step and innovative step, I will rely on the English translation under reg 5.23. I am not satisfied that D7 is sufficiently relevant and will thus not rely on the English translation of D7.

1. On 29 September 2025 I exercised the power of s 60(3) in relation to s 40(3) and requested submissions from the parties. The Applicant provided further submissions on 20 October 2025. The Opponent provided further submissions on 17 November 2025. On 27 January 2026 the Applicant sent a letter requesting that the Opponent's letter be disregarded.

1. The Evidence in Support for the standard application comprises:

• A declaration of Clyde Campbell dated 8 March 2024

• A declaration of Professor Koorosh Khodabandehloo dated 7 March 2024 and accompanying exhibits KK1 to KK10.

1. The Evidence in Support for the innovation patent comprises:

• Declaration of Clyde Campbell dated 27 March 2024

• Declaration of Koorosh Khodabandehloo dated 27 March 2024 and accompanying exhibits KK1 to KK10.

1. The evidence for the standard application and the innovation patent is similar; the main difference resides in Prof. Khodabandehloo's assessment of specific claims. For simplicity, I will predominantly refer to the evidence in support for the standard application throughout this decision and only refer to the evidence in support for innovation patent in relation to claims of the innovation patent.

1. The application and the innovation patent are governed by the Patents Act 1990 (the Act) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 as the Application was filed after 15 April 2013.

1. The Opponent has the onus to satisfy me, on a balance of probabilities, that a ground of opposition to grant exists. Then, if satisfied, I may refuse the application or revoke the innovation patent. Where appropriate, I must give the Applicant a reasonable opportunity to amend the relevant specification to remove any ground of opposition, as per subsections 60(3A), 60(3B), 101N(4) and 101N(6) of the Act.

1. The amended Statement of Grounds and Particulars has the following grounds:

• The grounds of opposition from the SGP for 2016429338 were: novelty (Section 18(1)(b)(i)) and inventive step (Section 18(1)(b)(ii)).

• The grounds of opposition from the SGP for 2023100082 were: novelty (Section 18(1A)(b)(i)) and innovative step (Section 18(1A)(b)(ii)).

1. Clyde Campbell is the founder and owner of the Opponent, Intelligent Robotics Pty Ltd. Mr Campbell previously worked at Scott Automation & Robotics Pty Ltd and is the inventor of the invention in the standard Application (paragraphs 1-3 of Mr Campbell's declaration).

1. Professor Koorosh Khodabandehloo is an engineer with an extensive list of qualifications and experience. Professor Khodabandehloo's experience includes experience developing carcass butchering systems (paragraphs 1-5 of Professor Khodabandehloo's declaration and annexure KK1).

1. Both Mr Campbell and Professor Khodabandehloo have experience that allows them to provide evidence relating to the present invention. Each provide expert evidence regarding the invention and common general knowledge at the priority date. I am satisfied that they have provided relevant evidence. I will assess the evidence according to its relevance to particular aspects of the analysis.

1. The description of the standard application provides a helpful summary of the field of the invention at page 1 line 8 to page 2 line 5:

In the meat processing industry much processing is performed whilst a carcass is conveyed along a conveyor line. For automated imaging and cutting steps it is often necessary to remove a carcass from the conveyor to stabilize the carcass for automated processing. This may involve placing the carcass on a trolley, holding the carcass using a robotic arm or placing the carcass on a flat conveyor. This requires additional handling and equipment and may make processing less efficient.

The difficulty with performing operations on a carcass moving on a conveyor is that the carcass my not remain in a stable frame of reference. Typically, a carcass will swing about its centerline. During imaging the movement of the carcass of the path of the conveyor may result in inaccurate or distorted imaging information being captured. The image information may indicate that the carcass is in a certain position with respect to the conveyor but due to swing this position may be different with respect to the conveyor at the cutting station.

During cutting swing of the carcass can present the cutting tool with a moving target to cut. This may also be out of alignment with the imaged information. Further the force of the tool on the carcass may move the carcass away from its free hanging position.

These problems have resulted in automated carcass processing steps typically being performed with the carcass removed from the conveyor.

It is an object of the invention to provide a carcass processing system and method which stabilizes the carcass during processing on a conveyor or to at least provide the public with a useful choice.

1. The invention is an automated system for butchering carcasses. Carcasses hang from pulleys that are conveyed along a conveyor rail. As the carcasses pass a belt the carcasses rest against a belt and this stabilises the carcasses.

1. When a carcass is located in front of the imaging device (e.g. camera), an image is taken. The imaging system provides information to the controller which calculates cutting paths based on the image information. When a carcass is located in front of a robot, the robot cuts the carcass.

1. The invention can be understood with reference to figures 1 and 2 which are shown below:

1. The description of the standard application corresponding to these figures states at page 4 lines 4 to 22:

Figure 1 shows an exemplary carcass processing system 1 in which carcasses 4 hang by hooks from pulleys 3 and are conveyed along conveyor rail 2. Carcasses are advanced along the conveyor from right to left so that they pass in front of imaging device 5 for imaging prior to passing in front of cutting tool 6.

In the region of the conveyor adjacent the imaging device 5 and cutting tool 6 a belt 8 is provided. Belt 8 is in the form of a continuous loop belt (only shown schematically) driven from right to left. The belt may suitably be between 200 to 3000mm in width. Belt 8 may be in the form of a number of rigid hinged sections or a flexible material. Belt 8 may be driven at a continuous speed by a motor or the motor may be controllable to stop and start the belt as described below.

Referring now to Figure 2 it will be seen that belt 8 is inclined at an angle θ to the vertical, which may suitably be between 5 to 40 degrees, with about 5 degrees being found adequate and requiring less support by the belt. Referring back to Figure 1 a transition zone 9 is provided for the belt to move the carcass 4 from a vertical hanging position to the inclined orientation shown in Figure 2. Due to the force of gravity upon the carcass it is forced against the inclined belt and this stabilizes the carcass. As the carcass now travels along a predictable path only the movement in the direction of the conveyor changes as the carcass moves (i.e. the swing element has been removed).

1. The independent claims of the standard application and the innovation patent are reproduced below.

b. a belt positioned below the conveyor such as to:

i. position the carcass away from its natural hanging position;

ii. stabilise the carcass by forcing it against the belt via the force of gravity only without any other stabilising element;

c. a cutting tool positioned to perform a cut whilst the carcass is against the belt; and

d. an imaging system positioned to capture an image of the carcass prior to cutting wherein the imaging system is selected from one or more of: an optical imaging system, an X-ray imaging system, a laser scanning camera, a time of flight camera and a Dual-energy X-ray absorptiometry system.

21. A method of performing an automated cut on a carcass comprising the steps of:

b. advancing the carcass along the conveyor against a belt moving in the direction of the conveyor which is positioned with respect to the conveyor such that the carcass is stabilised by forcing it against the belt via the force of gravity only without any other stabilising element;

c. imaging the carcass whilst it is against the belt using an imaging system selected from one or more of: an optical imaging system, an X-ray imaging system, a laser scanning camera, a time of flight camera and a Dual-energy X-ray absorptiometry system; and

d. performing a cut on the carcass whilst it is against the belt.

b. a belt positioned below the conveyor such as to:

i. position the carcass away from its natural hanging position;

ii. stabilise the carcass by forcing it against the belt via the force of gravity only;

c. a cutting tool positioned to perform a cut whilst the carcass is against the belt; and

d. an imaging system positioned to capture an image of the carcass prior to cutting whilst the carcass is against the belt, wherein the imaging system is selected from one or more of: an optical imaging system, an X-ray imaging system, a laser scanning camera, a time of flight camera and a Dual-energy X-ray absorptiometry system.

b. a belt positioned below the conveyor such as to:

i. position the carcass away from its natural hanging position;

ii. stabilise the carcass by forcing it against the belt via the force of gravity only without any other stabilising element;

c. a cutting tool positioned to perform a cut whilst the carcass is against the belt; and

d. an imaging system positioned to capture an image of the carcass prior to cutting whilst the carcass is against the belt, wherein the imaging system is selected from one or more of: an optical imaging system, an X-ray imaging system, a laser scanning camera, a time of flight camera and a Dual-energy X-ray absorptiometry system.

b. a belt positioned below the conveyor such as to:

i. position the carcass away from its natural hanging position;

ii. stabilise the carcass by forcing it against the belt via the force of gravity only without any other stabilising element;

c. a cutting tool positioned to perform a cut whilst the carcass is moving and against the belt; and

d. an imaging system positioned to capture an image of the carcass prior to cutting, whilst it is moving and against the belt, wherein the imaging system is selected from one or more of: an optical imaging system, an X-ray imaging system, a laser scanning camera, a time of flight camera and a Dual-energy X-ray absorptiometry system.

5. A method of performing an automated cut on a carcass comprising the steps of:

b. advancing the carcass along the conveyor against a belt moving in the direction of the conveyor which is positioned with respect to the conveyor such that the carcass is stabilised by forcing it against the belt via the force of gravity only;

c. imaging the carcass whilst it is against the belt using an imaging system selected from one or more of: an optical imaging system, an X-ray imaging system, a laser scanning camera, a time of flight camera and a Dual-energy X-ray absorptiometry system; and

d. performing a cut on the carcass whilst it is against the belt.

1. I consider the claims to be clear and unambiguous.

1. Under subsection 7(1), an invention is taken to be novel unless it is not novel in the light of the prior art base. Information in a document forms part of the prior art base for the purposes of novelty if it was published before the priority date of a claim, or the information was contained in a specification published after the priority date of the claim under consideration and, if that information is, or were to be, the subject of a claim of the specification, that claim has, or would have, a priority date earlier than that of the claim under consideration (referred to as "whole of contents" novelty). The prior art base is not limited to publicly available documents; the prior art base includes public prior use.

1. It is well established that the general test for lack of novelty is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd, [1977] HCA 19; 137 CLR 228 at 235 [20]:

"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".

1. Prior art base is relevantly defined in the Schedule 1 dictionary as:

(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.

(b) in relation to deciding whether an invention is or is not novel:

(i) information of a kind mentioned in paragraph (a);

1. The information made publicly available through doing an act (a(ii)) is known as "prior use".

1. Prior use requires a relatively high standard of proof. The UK Appeal Tribunal discussed the standard of proof required to establish prior use in Seiller's Application [1970] RPC 103. At page 106 Graham J. stated:

"In my judgement it is necessary that proof of prior user in opposition cases should be very clear. Normally in the absence of cross-examination, this will involve corroboration of a mere statement as to recollection in a declaration, particularly where the time interval involved is considerable. Such corroboration is often best found in documents contemporary with the fact to be proved. Each case, however, must be considered on its own facts, and I say expressly that I am not attempting to lay down any rule as to what is or is not sufficient in any given case."

1. The UK Court of Appeal approved these comments in Dunlop Holdings Limited's Application [1979] RPC 523 at 548. A similar approach is evident in Windsurfing International Inc v Borsimex Pty Ltd, (1984) AIPC 90-135. Towards the end of section 8.38 Waddell J. states:

"It is essential that an allegation of prior public use should be strictly proved. Evidence which is uncorroborated is undoubtedly suspect and should be scrutinised with particular care. The Court must be satisfied that the proof is sufficient in the circumstances, having regard to the gravity of the allegation."

1. In terms of whether information was publicly available at the relevant time, in Insta Image Pty Ltd v KD Kanopy Australasia Pty Ltd, [2008] FCAFC 139, the Full Federal Court listed several principles at [124] that emerged from a number of prior cases. Relevant to the present matter:

"... The information must have been made available to at least one member of the public who, in that capacity, was free, in law and equity, to make use of it (PLG Research Ltd v Ardon International Ltd[1993] FSR 197 at 226 per Aldous J cited in Jupiters at [141]). (This test of communication to a member of the public who is free in law or equity to use the information as he or she pleases had been enunciated by the English Court of Appeal as early as 1887 in Humpherson v Syer (1887) 4 RPC 407 at 413 per Bowen LJ.)

... It is immaterial whether or not the invention has become known to many people or a few people (Sunbeam Corporation v Morphy-Richards (Aust) Pty Ltd [1961] HCA 39; (1961) 180 CLR 98 at 111 per Windeyer J). As long as it was made available to persons as members of the public, the number of those persons is not relevant. Availability to one or two people as members of the public is sufficient in the absence of any associated obligation of confidentiality (Fomento Industrial S.A. v Mentmore Manufacturing Co Ltd [1956] RPC 87 at 99-100; Re Bristol-Myers Co's Application [1969] RPC 146 at 155 per Parker LJ).

... information said to destroy novelty must be of a kind that would disclose to a person skilled in the relevant art all of the essential features or integers of the invention (cf RD Werner & Co Inc v Bailey Aluminium Products Pty Ltd [1989] FCA 57; (1989) 25 FCR 565 at 593-594)

... information said to destroy novelty must 'enable' the notional person skilled in the art at once to perceive, to understand, and to be able practically to apply the discovery, without the need to carry out further experiments in order to arrive at that point (Stanway Oyster at 581-582)."

1. At [125], the court further referred to Jupiters Ltd v Neurizon Pty Ltd, (Jupiters) [2005] FCAFC 90, and stated as follows:

"In Jupiters, there was mere observation of electronic gaming systems or devices. In the absence of direct evidence from a person skilled in the art of what could be gleaned from such observation, the Full Court was not prepared to conclude that it was sufficient to constitute an anticipation. Jupiters did not discharge its onus to establish an enabling disclosure (at [147])."

1. Quoting more directly from [146] of Jupiters:

"The question as to what information was made available by Jupiters to its customers remains. No direct evidence was given on the point. We have held that mere observation of the system in operation by a person skilled in the art would not disclose the features about it which would anticipate the invention claimed here."

As defined in Schedule 1 of the Patents Act 1990, the prior art base in relation to deciding whether an invention is or is not novel includes "information made publicly available through doing an act, whether in or out of the patent area." Notably, there is no time limit or geographical limitation with regard to when and where the act was done. Hence, the acts in Spain throughout the period from 1999 to 2002 that are outlined in the Khodabandehloo Declarations and that made FACCSA v1 and FACCSA v2 publicly available are included within the prior art base for assessing the novelty of the patent application and the innovation patent.

1. The Opponent's novelty ground of opposition is based on FACCSA v1 and not FACCSA v2, since FACCSA v1 discloses the feature of "stabilise the carcass by forcing it against the belt via the force of gravity only without any other stabilising element" whereas FACCSA v2 has other stabilising elements to stabilise the carcass on the belt.

1. The FACCSA v1 is a robotic carcass butchering system.

FACCSA v1 and FACCSA v2 disclosed "a conveyor for conveying a hanging carcass". FACCSA v1 and FACCSA v2 used an overhead drive system, which displaced hooks along a conveyor track. The carcasses were hung from the hooks. Attached as Annexure KK8 is one of the FACCSA v1 technical drawings upon which the conveyor and a hanging carcass have been marked in red.

1. The Applicant's submissions state at paragraph 31 and 32:

The Opponent relies upon an alleged prior use of an early version of a robotic meat carcass processing facility in Spain ("FACCSA v1") in attacking the novelty of claims 1-14, 16-17, and 19-26 of the Standard Application and claims 1-5 of the Innovation Patent.

It is well established that a public prior use must be strictly proved. Applicant submits that there are at least two limbs of establishing lack of novelty due to the alleged prior use of FACCSA v1 which the Opponent's evidence fails to establish to the requisite standard:

1. the Opponent's evidence fails to strictly prove that the FACCSA v1 was publicly used; and

2. the Opponent's evidence fails to strictly prove that the FACCSA v1 constitutes an enabling disclosure of every integer of each claim.

1. The Khodabandehloo Declaration states at paragraphs 8-14:

From 1999 to 2002 I was the Project Coordinator and Technical Advisor in relation to the design and implementation of a robotic meat carcass processing facility in Spain, which I shall refer to as "the FACCSA implementation". This was one of the R&D projects under the EU Programme Framework initiatives from 1987. FACCSA were one of the end-users of the technology, with a number of other partners including Norway Meat and suppliers such as KUKA AG. and E+V Technology GMbH in Germany. The technology emerging from the project was offered by BANSS (now part of Frontmatec) and Garrotxa S.A.

The technical drawings attached as Annexure KK3 (SGP D1), dated March to May 2000, show an initial version of the FACCSA implementation (hereinafter "FACCSA v1"). FACCSA V1 was implemented and fully commercially operational by at least late July 2000. FACCSA v1 used a combination solely of gravity and an inclined belt to stabilise the carcass during cutting.

The experience gained from operating FACCSA v1 showed that the combination solely of gravity and an inclined belt was sufficient to stabilise the carcass against forces exerted during vertical cutting. However, the combination solely of gravity and an inclined belt was insufficient to stabilise the carcass during horizontal cutting. That is, when operating FACCSA v1, horizontal cutting forces exerted upon the carcass had a potential to cause unwanted horizontal displacement of the carcass across the inclined belt. For this reason, a second version of the FACCSA implementation (hereinafter "FACCSA v2") was implemented in May 2001, in which a clamp mechanism was added at a position towards the top of the carcass. This acted to clamp the carcass against the belt, which provided more stability against horizontally exerted cutting forces. More specifically, the clamp of FACCSA v2 was used to improve the stability of the carcass for a horizontal cut at the last lumbar vertebra. The clamp was the only substantive technical difference between FACCSA v1 and FACCSA v2.

Attached as Annexure KK4 (SGP D5) is a screen grab from YouTube Video corporative Prolongo Faccsa at 4 mins 44 sec (uploaded to YouTube on 10 August 2009), which shows FACCSA v2 having a clamp in the form of a bar disposed towards the top of the carcass, which was displaceable to push the carcass towards the inclined belt.

Throughout the period from 1999 to 2002, whilst firstly FACCSA v1, and subsequently FACCSA v2, were being developed, implemented and operated, I personally observed numerous visitors to the FACCSA facility who were given access to view the full workings and functioning of FACCSA v1 and FACCSA v2. This included reviewers from the European Commission, customers, potential customers and employees. Many [of] these visitors were not under any obligation of confidentiality regarding the technical details of FACCSA v1 or FACCSA v2.

The European Commission CORDIS article entitled "Advanced robotics technology for efficient pork production", which is attached as Annexure KK5, relates to the FACCSA implementation and states that the purpose of the FACCSA implementation was "as a first demonstrator project". The aim of this was to show the industry the capabilities of the technology.

At no time during my role as Project Coordinator and Technical Advisor for the FACCSA implementation from 1999 to 2002 was I under any under any obligation of confidentiality with specific reference to the technical details of FACCSA v1 or FACCSA v2.

In 2003 an international conference was held in Spain entitled "International Meat Automation (IMAC 2003)". The programme for this conference is attached as Annexure KK6 (SGP D2). It can be seen from this programme that at this conference I was the Chairman of Session 2, entitled "Recent Advances". It can be seen from this programme that on 21 November 2003, a delegation of attendees from the conference took a tour of a local plant to see robotics at work. This was a tour of the FACCSA facility, which included a non-confidential disclosure to the attendees of the FACCSA v2 system.

1. There are two categories of the 'public' that the Opponent argues the FACCSA v1 was 'made publicly available' to: visitors and Prof. Khodabandehloo.

In paragraph 11 of the Khodabandehloo Declaration dated 7 March 2024, the Declarant attests to personally observing numerous visitors to the FACCSA facility throughout the period from 1999 to 2002 who were given access to view the full workings and functioning of FACCSA v1 and FACCSA v2. The Declarant attests that many [of] these visitors were not under any obligation of confidentiality regarding the technical details of FACCSA v1 or FACCSA v2. Hence, it follows that information arising from viewing of the full workings and functioning of FACCSA v1 and FACCSA v2 was publicly available.

The conclusion expressed in the preceding paragraph is supported by paragraph 12 of the Khodabandehloo Declaration dated 7 March 2024. This refers to a European Commission CORDIS article, attached as Annexure KK5, which states that the purpose of the FACCSA implementation was "as a first demonstrator project". The Declarant attests that the aim of this was to show the industry the capabilities of the technology.

There is sufficient doubt regarding the information made available to alleged visitors. The evidence does not specifically particularise which versions of FACCSA v1, if any, were visible to visitors, and instead makes a relatively vague general assertion that suggest all versions were viewable. However, it is difficult to believe recollections from ~25 years ago can be sufficiently concrete and accurate to know that every relevant version of FACCSA was viewable to visitors (e.g., it may have only been the FACCSA v2 that was visited).

1. I consider the information about the visitors who viewed the FACCSA v1 to be vague. There is insufficient information about who visited the carcass processing facility in Spain ("FACCSA v1"), the dates they visited, and which of the visitors were under an obligation of confidentiality (if any).

1. Prof. Khodabandehloo's declaration at paragraph 11 mentions that "Many [of] these visitors were not under any obligation of confidentiality regarding the technical details of FACCSA v1 or FACCSA v2."

1. This immediately raises questions such as which visitors were under an obligation of confidentiality? It is unclear why some visitors would be under an obligation of confidentiality while other would not. If some of the visitors revealed the invention, then this would undermine the purpose of having other visitors an obligation of confidentiality.

The European Commission CORDIS article entitled "Advanced robotics technology for efficient pork production", which is attached as Annexure KK5, relates to the FACCSA implementation and states that the purpose of the FACCSA implementation was "as a first demonstrator project". The aim of this was to show the industry the capabilities of the technology.

1. The Opponent noted that the FACCSA was a "demonstrator project" and further noted in the hearing that 1 million euros was contributed to the projection by the EU. The Opponent argued that this suggested that the project was open to the public.

1. The first sentence of the CORDIS article states:

The proposed demonstrator project will utilise the complementary state-of-the-art research know-how within the consortium to implement the first European production system using food grade robotics equipment designed to end-user specification.

1. I consider that the "demonstrator project" was used by "the consortium". Although it is not clear who was in "the consortium", I infer that this was a limited group of entities and was not necessarily a public disclosure.

1. I am not satisfied that the evidence establishes that the FACCSA v1 was publicly viewed (i.e. viewed by members of the public with no obligation of confidentiality) by the visitors mentioned in the Prof. Khodabandehloo declaration.

1. The Opponent submissions state at paragraph 16:

In paragraph 13 of the Khodabandehloo Declaration dated 7 March 2024, the Declarant attests that at no time during his role as Project Coordinator and Technical Advisor for the FACCSA implementation from 1999 to 2002 was he under any obligation of confidentiality with specific reference to the technical details of FACCSA v1 or FACCSA v2. Hence, at the very least, the Declarant was a "single person" to whom the information was available, which rendered the full workings and functioning of FACCSA v1 and FACCSA v2 publicly available.

1. The Applicant submissions state at paragraph 36.1:

Prof. Khodabandehloo asserts that he was under no obligation of confidence during the period of 1999-2002 in relation to the technical details of FACCSA v1. However, Prof. Khodabandehloo also states that he was the "Project Coordinator and Technical Advisor for the FACCSA implementation" during this period. It is of course common and usual for project coordinators to be under an explicit or implied duty of confidence in relation to research projects.

1. The Applicant submissions state at paragraph 36.3:

For example, Prof. Khodabandehloo is the inventor of WO 01/67873 (priority date 16 March 2000), which strongly suggests that, circa 2000, Prof. Khodabandehloo's work on FACCSA did not constitute a public disclosure to a person free in law and equity to use the knowledge. That is, development of FACCSA was Prof. Khodabandehloo's job and responsibility. According to the Opponent's reasoning, any inventor is at risk of invalidating their own patent on the basis of the inventor's own knowledge of the invention that existed before an application is filed.

1. I agree that as the inventor of WO 01/67873 (which is the same family as D8 (EP 1 263 292 B1)) Prof. Khodabandehloo would have been prudent to not publicly reveal the invention before the priority date of the patent application (16 March 2000) (since it derives priority from the priority document GB 0006236.4). This would have been prudent for two reasons. Firstly, revealing the invention before the priority date gives other parties information that can be used to their advantage, for example, applying for a patent for a similar invention. Secondly, because publicly revealing an invention before the priority date can be treated as prior art for the purposes of novelty and inventive step objections (depending on the jurisdiction, and the time of the disclosure in relation to the filing date) and thus could invalidate the patent.

1. Although the public disclosure of the invention in WO 01/67873 is unrelated to the public disclosure of FACCSA v1, the importance of keeping inventions confidential before the priority date is similarly important.

1. I consider that employees and contractors for entities performing research and development generally have an implied expectation of confidentiality regarding the projects they are working on. Once the project is complete and the resulting products are made commercially available, the confidentiality about the project is (usually) lifted.

1. When Prof. Khodabandehloo states in his declaration:

At no time during my role as Project Coordinator and Technical Advisor for the FACCSA implementation from 1999 to 2002 was I under any under any obligation of confidentiality with specific reference to the technical details of FACCSA v1 or FACCSA v2.

1. It may be that there was no explicit obligation of confidentiality was made of Prof. Khodabandehloo in his role as Project Coordinator and Technical Advisor, however as noted above, there may have been an implicit expectation of confidentiality.

1. Notwithstanding the above, in the absence of evidence to the contrary, I accept Prof. Khodabandehloo was not under an obligation of confidentiality.

Was Prof. Khodabandehloo a member of the public that the invention was made available to?

1. Prof. Khodabandehloo was the Project Coordinator and Technical Advisor for the FACCSA implementation from 1999 to 2002. I understand this to mean that he was part of the team who invented the FACCSA v1 system.

1. The question is whether the inventor (or a member of an inventor team) can be considered "a member of the public" for determining if prior use has occurred.

1. In Damorgold Pty Ltd v JAI Products Pty Ltd [2015] FCAFC 31 at [46] it was stated:

In Merrell Dow, Lord Hoffman considered the making available by prior use under the Patents Act 1977 (UK). His Lordship stated that, to be part of the state of the art:

the invention must have been made available to the public. An invention is a piece of information. Making matter available to the public within the meaning of section 2(2) therefore requires the communication of information. The use of a product makes the invention part of the state of the art only so far as that use makes available the necessary information.

1. Thus, in determining whether prior use has occurred, the question is whether the invention has been made available to the public. That is, whether the invention has been transmitted from the inventor to 'the outside world'.

1. The inventor (or a member of the inventor team) is thus not "a member of the public" that the invention has "been made available to" in determining whether prior use of their invention has occurred. Consequently, I consider that Prof. Khodabandehloo's lack of obligation of confidentiality does not equate to a public disclosure of the invention.

1. I have found that there was not a "prior use" disclosure of the FACCSA v1 system. Thus, it is a moot point as to whether there was an enabling disclosure of FACCSA v1.

1. There was no public disclosure of FACCSA v1. It follows that the claims of the standard application and the innovation patent are novel in view of the evidence.

1. It is a requirement of subsection 18(1) of the Act that an invention, so far as claimed in any claim, involves an inventive step. Subsection 7(2) states that an invention is taken to involve an inventive step unless it would have been obvious to a person skilled in the art in the light of the common general knowledge, considered alone or together with the prior art:

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).

1. Subsection 7(3) prescribes the information that may be considered as:

The information for the purposes of subsection (2) is:

(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.

1. Prior art information is information that is part of the prior art base, and the prior art base is information in a document that is publicly available and information made publicly available through doing an act. Once the common general knowledge and prior art information have been identified, the question is whether the claimed invention would have been obvious. Various verbal tests have been set out to explain this question. In Wellcome Foundation Ltd v V.R. Laboratories (Aust.) Pty Ltd [1981] HCA 12; (1981) 148 CLR 262 Aickin J stated:

"The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not."

A first aspect of the inventive step submission focusses upon the following prior art documents:

1. The Opponent submissions state at paragraph 33:

The person skilled in the art could be reasonably expected to have combined D6, D7 and D8 for the following reasons:

• The problem being faced by the skilled worker was how to stabilise the carcass to allow cutting to take place. This is a central concern of each of the three prior art documents.
• All three of the prior art documents D6, D7 and D8 relate to the processing of carcasses in an abattoir type environment, with the carcass being supported by a moving over-head conveyor.
• D6 and D8 each disclose roboticised cutting; whereas D7 discloses manual cutting. However, when trying to decide how to stabilise a carcass for robotic cutting, the most obvious starting point is to look at the pre-existing techniques for the stabilisation of carcasses for manual cutting and then to simply replace the manual cutter with a robotic cutter.

1. The Opponent submissions state at paragraph 34:

The following tables list examples of where the various claimed features of the 338 application are disclosed in a combination of the three prior art documents.

D6 - Fig. 3 shows conveyor device 13 - para [0034].

b. a belt positioned below the conveyor such as to: i. position a carcass away from its natural hanging position; and

D6 - Fig. 3 shows support surface 20 (which is construed as a belt) below the conveyor device 13.

D6 - Fig. 8 shows the support surface 20 positioning the carcass away from its natural hanging position.

ii. stabilise the carcass by forcing it against the belt via the force of gravity only without any other stabilising element;

D6 - paras [0040] to [0043] disclose the use of gravity and fixing elements 62 (called 'head holders'). Hence, D6 does not disclose the use of gravity only without any other stabilising element.

D7 - Fig. 3 discloses the use of gravity only without any other stabilising element..

c. a cutting tool positioned to perform a cut whilst a carcass is against the belt; and

D6 - Figs. 8 & 9 show the robot 70 holding the saw whilst the carcass 12 is against the support surface 20 - paras [0001], [0037] to [0038].

d. an imaging system positioned to capture an image of the carcass prior to cutting wherein the imaging system is selected from one or more of: an optical imaging system, an X-ray imaging system, a laser scanning camera, a time of flight

camera and a Dual-energy X-ray absorptiometry system.

D6 - [0033], [0044] "optical systems" "3D laser scanner".

1. The invention of D6 can be understood with reference to figures 1, 3 and 8:

1. The translation of D6 states at paragraphs 43 and 51:

[0043] From the base section 44, 46 goes to the base section 44, 46 around an axis running parallel to the conveying path of the means of transport 48 swivel frame 56, from which vertically or substantially vertically movable two first pipe elements 58, 60 emanate, which are connected to a preferably plate-shaped fixing element 62 also called head holder - which runs perpendicular to the pipes 58, 60. Furthermore, a second pipe element 64 [for example] in the form of a rack and pinion is either from the fixer element 62, which runs self-locking in the holding section 56. The force of the self-locking of the second pipe element 62 running parallel to the first pipe elements 58, 60 is designed in such a way that a vertical shift is possible for the desired height adjustment of the fixing element 62, but an immovability is given when pressing on one of the pig halves 10, 12. The controlled vertical adjustment, i.e. the height orientation of the fixing element 62, is explained in more detail below.

[0051] At the end of intermediate section 92, when further conveying the fixing device 34, 36, 38, 40, 42, the second roll 94 then passes into the guide section 92 of the alignment device 86, which is then adjusted along a column 96 and aligned to a height in order to adjust the fixing element 62 to a height at which the pig half to be fixed 10, 12 is to be pressed against the support surface 20. The height is determined depending on the length of the pig halves to be fixed 10, 12, which is previously measured in particular by an optical sensor such as scanner.

1. D6 appears to disclose all the features of claim 1 except D6 discloses the use of gravity and fixing elements 62 (also called 'head holders'). D6 does not discloses the feature of stabilising the carcass by forcing it against the belt via the force of gravity only without any other stabilising element.

1. The invention of D7 can be understood with reference to figure 3

1. D7 discloses the carcass to be held on the belt with the force of gravity only. However, D7 fails to disclose several other features of the claim such as the camera and (robotic) cutting tool.

1. The invention of D8 can be understood with reference to figure 3

1. D8 discloses an invention similar to the present invention, however instead of a belt, D8 discloses a vertical support wall (4) against which the carcasses rest.

The person skilled in the art could be reasonably expected to have combined D6, D7 and D8 for the following reasons:

• The problem being faced by the skilled worker was how to stabilise the carcass to allow cutting to take place. This is a central concern of each of the three prior art documents.
• All three of the prior art documents D6, D7 and D8 relate to the processing of carcasses in an abattoir type environment, with the carcass being supported by a moving over-head conveyor.
• D6 and D8 each disclose roboticised cutting; whereas D7 discloses manual cutting. However, when trying to decide how to stabilise a carcass for robotic cutting, the most obvious starting point is to look at the pre-existing techniques for the stabilisation of carcasses for manual cutting and then to simply replace the manual cutter with a robotic cutter.

Applicant submits that the Opponent has failed to discharge its onus of establish lack of inventive step in view of D6 and the common general knowledge at least for the following reasons:

45.1. The Opponent has filed no evidence in relation to inventive step. Therefore, the Opponent has failed to discharge its onus to establish this ground.

45.2. The Opponent therefore has not established, on the balance of probabilities, that the invention defined by any claim of the Standard Application 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, considered together with the disclosure of D6.

45.3. To the extent that the Opponent relies upon a combination of D6 and D7, or D6, D7, and D8, for its second attack, Applicant submits that the Opponent has not established that said combinations satisfy sub-section 7(3)(b).

1. The evidence shows that the FACCSA v1 (without the stabilisation element) was replaced by the FACCSA v2 (that had a stabilisation element). Prof. Khodabandehloo states at paragraph 9:

The experience gained from operating FACCSA v1 showed that the combination solely of gravity and an inclined belt was sufficient to stabilise the carcass against forces exerted during vertical cutting. However, the combination solely of gravity and an inclined belt was insufficient to stabilise the carcass during horizontal cutting.

1. The usual way of collecting evidence about whether claims lack an inventive step is as follows:

• Determining the problem that the present invention sought to overcome
• Presenting the expert with prior art that solves the problem
• Without informing the expert of the present invention, presenting the problem to an expert and asking how (at the priority date) they would have solved the problem

1. If the expert would have solved the problem in the same way as the present invention did, then this indicates that the invention is obvious (and lacks an inventive step). If the expert solves the problem in a different way as the present invention, then this indicates that the invention is not obvious (and has an inventive step).

1. Mr Campbell is the inventor of the present invention, which precluded this approach to collecting evidence on invention.

1. This approach of collecting evidence from Professor Khodabandehloo was not used. Professor Khodabandehloo was provided with the specifications of the standard application and innovation patents (paragraph 15 of his declaration). Professor Khodabandehloo then gave evidence of whether his FACCSA v1 and FACCSA v2 had the same features as the features of the claims.

1. In the absence of expert evidence about how they would solve the problem, it is difficult to determine what the notional person skilled in the art would have done.

1. The evidence relating to inventive step suggests that the stabilisation element (present in the FACCSA v2 machine) was seen as an improvement to the FACCSA v1. This indicates that a person skilled in the art would not modify D6 to remove the stabilization elements (the fixing elements 62 (also called 'head holders')). Although there are not stabilisation elements in D7 or D8, I am not satisfied that a person skilled in the art would be motivated to combine the lack of stabilisation elements from these documents with the invention of D6.

1. Consequently, I am not satisfied that the teachings of D6, D7 and D8 would be combined such that the stabilisation element of D6 would be removed. I am not satisfied that that a combination of D6, D7 and D8 establishes a lack of inventive step.

1. The claims of an innovation patent must involve an innovative step. The present patent is governed by the Act as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012, subsection 7(4) of the Act which provides that:

"An invention is to be taken to involve an innovative step when compared with the prior art base unless the invention would, 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, only vary from the kinds of information set out in subsection (5) in ways that make no substantial contribution to the working of the invention."

1. The decision of the Full Court in Dura-Post (Aust) Pty Ltd v Delnorth Pty Ltd [2009] FCAFC 81 confirmed the approach of Gyles J in Delnorth Pty Ltd v Dura-Post (Aust) Pty Ltd [2008] FCA 1225 at [52]-[53], who made a clear distinction between an innovative step and an inventive step:

"There is no need to search for some particular advantage in the art to be described as an innovative step which governs consideration of each claim. The first step is to compare the invention as claimed in each claim with the prior art base and determine the difference or differences. The next step is to look at those differences through the eyes of a person skilled in the relevant art in the light of common general knowledge as it existed in Australia before the priority date and ask whether the invention as claimed varies from the kinds of information set out in s7(5) in ways that make no substantial contribution to the working of the invention ...

The phrase 'no substantial contribution to the working of the invention' involves quite a different kind of judgement from that involved in determining whether there is an inventive step. Obviousness does not come into the issue ... Indeed the proper consideration of s 7(4) is liable to be impeded by traditional thinking about obviousness."

1. Gyles J also provided an indication as to what is encompassed by the requirement of a "substantial" contribution at [61]:

"In my view the provenance of the phrase 'make no substantial contribution to the working of the invention' indicates that 'substantial' in this context means 'real' or 'of substance' as contrasted with distinctions without real difference".

1. The Patent Examiner's Manual of Practice and Procedure chapter 5.6.15.5 identifies some questions which can assist in determining whether there is an innovative step:

a) Does the difference identified between the invention and the prior art convey an advantage to the invention?

b) Does the difference provide a technical or functional contribution to the invention?

c) Is the difference a significant aspect of the operation of the invention?

1. The Opponent has provided very little by way of reasoning with respect to innovative step.

Hence, a combination of prior art documents D6 and D7 renders obvious all of the claims of the 082 innovation patent.

Combining this element of common general knowledge with D6, D7 and D8 renders obvious all of the claims of the 082 innovation patent.

1. It is notable that the combining of documents that can be done when assessing innovative step is more restrictive when assessing inventive step.

1. For innovative step, combining documents is prescribed by s 7(5)(b) that allows for:

2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art would treat them as a single source of that information.

1. D6, D7 and D8 are not related documents in any way that would result in them being treated as a single source of information by a person skilled in the art.

1. Considering these documents individually in the analysis above I have identified the differences between the claimed invention and each of the documents. For each document, the difference is considered to provide a technical contribution, and so I consider the claims are innovative in light of each of D6, D7 and D8.

1. Subsection 40(3) requires that the claim(s) must be supported by matter disclosed in the specification. In Merck Sharp & Dohme Corporation v Wyeth LLC (No 3) [2020] FCA 1477 (Merck), Burley J explored the requirement of support at [546]-[547]:

In CSR Building Products Ltd v United States Gypsum Company [2015] APO 72, Dr S D Barker adopted the summary provided by Aldous J in Schering Biotech at 252 - 253, which has been often followed in the United Kingdom:

...to decide whether the claims are supported by the description it is necessary to ascertain what is the invention which is specified in the claims and then compare that with the invention which has been described in the specification. Thereafter the court's task is to decide whether the invention in the claims is supported by the description. I do not believe that the mere mention in the specification of features appearing in the claim will necessarily be a sufficient support. The word "support" means more than that and requires the description to be the base which can fairly entitle the patentee to a monopoly of the width claimed.

That approach encapsulates broadly the claim support obligation under s 40(3). To it may be added the requirement that the technical contribution to the art must be ascertained. Where it is a product, it is that which must be supported in the sense that the technical contribution to the art disclosed by the specification must justify the breadth of the monopoly claimed.

1. In CSR Building Products Limited v United States Gypsum Company [2015] APO 72 (CSR) that was referred to with approval in Merck, the delegate Dr Barker formulated the following process in order to determine whether a claim is supported by matter disclosed in the specification.

• Construe the claims to determine the scope of the invention as claimed,
• Construe the description to determine the technical contribution to the art, and
• Decide whether the claims are supported by the technical contribution to the art.

1. In Calix Limited v Grenof Pty Ltd [2023] FCA 378 at 128 Nicholas J commented on support issues which arise from an inconsistency between the claims and the description rather than the claims being too broad:

Although discussion of s 40(3) is often focused on the breath of the claim, there may be some claims which lack support not because they are too broad, but because they define an invention that is materially different to what is described in the body of the specification. Hence, a claim that includes a feature not disclosed in the specification, or omits a feature that is disclosed, may lack support because the invention claimed is materially different from the invention disclosed. Whether or not the claim will lack support in such circumstances will depend on the proper characterisation of the invention disclosed in the body of the specification and the invention claimed. See, for example, the invention described in the relevant priority document and the invention claimed in AstraZeneca at [254]-[255] which were characterised by the Full Court of the Federal Court as "fundamentally different" inventions. It is difficult to see how a claim to an invention that is fundamentally different from that which is disclosed in the specification could be "supported by matter disclosed" in accordance with s 40(3) of the Act.

During the hearing I raised questions about whether claim 1 of 2016429338 was supported by the specification. Although not explicitly raised in the hearing, I note that the same issue is present in the independent claims 1, 2 and 3 of 2023100082. For conciseness, throughout this letter when I refer to claim 1 of 2016429338 this also applies to independent claims 1, 2 and 3 of 2023100082. I will consider this issue under the powers of s 60(3).

In the hearing I noted that essential features appeared to be missing from independent claim 1 of 2016429338. Specifically, claim 1 does not define that the belt moves in the direction of the conveyor to allow the carcass to be stabilised against the belt via the force of gravity. I noted that from the specification it appeared that the feature of the belt moving was critical to the invention. This is a feature that is present in independent claim 21 but absent from independent claim 1.

I further noted that claim 2 defined that the belt was "inclined to the vertical" which suggested (by presumption against redundancy) that claim 1 includes within its scope a vertical belt.

I also noted that since the moving function of the belt was not defined in the claims, prior art document D8 (EP 1 263 292 B1) appeared to closely resemble the claimed invention. Although D8 disclosed a vertical wall rather than a belt, the wall disclosed in D8 and the belt defined in claim 1 had the same function - to provide support to the carcass as it is cut. I raised this point not with the intention of raising an inventive step issue for claim 1 with respect to D8 (since there is no evidence that a person skilled in the art would substitute the wall of D8 with a belt), but instead as a way of pointing out the breadth of scope of claim 1.

In the hearing the Applicant conceded that claim 1 omitted features of the invention described in the specification and expressed a desire to correct the claims.

I note there is a further potential support issue which was not raised at the hearing. Specifically, the claims do not define the functional relationship between the imaging system and the other elements of the invention. For example, from the description it appears to be an essential feature of the invention that the movement of the cutting tool depends on the information from the imaging system. In summary there are three features of the described invention which are not defined in claim 1:

c) The functional relationship between the imaging system and the other elements of the invention (for example, the functional relationship between the imaging system and the cutting tool).

I note that claim 21 of 2016429338 and claim 5 of 2023100082 do not define features b) and c).

I invite the parties to provide submissions on whether: 1) claim 1 has support from the specification given the absence of these three features from the claim, and 2) claim 21 of 2016429338 and claim 5 of 2023100082 have support from the specification given the absence of two features from the claims. The time periods for providing these submissions are set out at the end of this letter.

1. The Applicant stated in their further submissions of 20 October 2025:

The Applicant is prepared to make amendments, at the appropriate time, to address the three issues raised by the Delegate, namely (with respect to claim 1 of the standard application):

A) The belt moves in the direction of the conveyor.

C) The functional relationship between the imaging system and the other elements of the invention (for example, the functional relationship between the imaging system and the cutting tool).

Although the Applicant intends to decide upon appropriate amendments for both the standard application and the innovation patent after issuance of the hearing decision, the Applicant notes that a combination of standard application claims 1, 2, 9, and 14 would appear to address the issues raised by the Delegate.

1. The Opponent stated in their further submissions of 17 November 2025:

With reference to the Applicant's post-hearing submissions dated 20 October 2025, we submit that there is an additional essential feature missing from all of the claims, which would not be addressed by the amendments that the Applicant has indicated that it is prepared to make. This relates to the speed of the conveyor relative to the speed of the belt.

The Applicant has indicated a willingness to amend the independent claims to include various limitations, some of which are along the following lines:

wherein the belt is driven in generally the same direction that carcasses are advanced along the conveyor

a controller which calculates one or more cutting path based on information received from the imaging system and controls the cutting tool to perform cuts according to the one or more cutting path.

Whilst we agree that these are necessary limitations, we submit that they do not go far enough because such an amended claim would still remain silent with regard to the speed at which the conveyor is driven relative to the speed at which the belt is driven. Hence, the scope of such an amended claim would include driving the conveyor at the same speed as the belt or driving the conveyor at a different speed to that of the belt (albeit with both being driven in the same general direction).

As was submitted on behalf of the Opponent during the hearing, for the invention to function, it is essential that the conveyor and the belt are driven at the same speed. If the speeds are equal, then the carcass is stabilised whilst it rests against the belt (i.e. the carcass remains static as it rests against the belt whilst the carcass is also being hung from the conveyor). Hence, the image of the carcass obtained by the imaging system prior to cutting remains relevant to cutting path calculations and cuts performed by the cutting tool. Hence, the invention can function if the speeds are both equal to zero (i.e. conveyor and belt both stopped) or the conveyor and belt both have the same non-zero speed.

However, if the speed of the conveyor differs from the speed of the belt (despite both proceeding in the same direction), the carcass cannot be stabilised by the belt. Rather, the differential between the conveyor speed and the belt speed would cause the carcass to swing longitudinally along the belt whilst it is resting against the belt and is simultaneously being hung from the conveyor. If the conveyor is moving faster than the belt, the belt would drag upon the carcass, causing the bottom of the carcass to swing longitudinally behind the top of the carcass (since the top of the carcass is being supported by the conveyor, which is moving faster than the belt). If the conveyor is moving slower than the belt, the bottom of the carcass would swing longitudinally in front of the top of the carcass because the belt would be pushing it forwards relative to the point from which the carcass hangs from the conveyor). Either way, this longitudinal movement would destabilise the carcass and render the invention non-functional. This is because the data that was obtained from the imaging system prior to cutting would no longer accurately define the position of the carcass, which would render control of the cutting tool impossible.

The importance of preventing swinging of the carcass is mentioned numerous times in the patent specification, such as:

• page 1, lines 15 to 25;
• page 2, lines 3 to 5;
• page 4, lines 18 to 22;
• page 5, lines 8 to 10; and
• page 7, lines 6 to 8.

Despite the essentiality of the speed of the conveyor being equal to the speed of the belt, the patent specification is wholly silent in this regard. Additionally, the patent specification is wholly silent in relation to any apparatus or method variations that would allow the invention to function if the conveyor speed differs from the belt speed. Hence, the claims are invalid for lack of support and/or lack of sufficiency. We submit that this represents a fatal flaw in the specification that cannot be remedied by amendment.

1. The Applicant has conceded that the claims lack support for the three aspects I raised in my letter of 29 September 2025. I will briefly elaborate on each of the three aspects.

The belt moves in the direction of the conveyor

1. The description states at page 2 lines 21 to 27:

According to another example embodiment there is provided a method of performing an automated cut on a carcass comprising the steps of:

b. advancing the carcass along the conveyor against a belt moving in the direction of the conveyor which is positioned with respect to the conveyor such that the carcass is stabilised by forcing it against the belt via the force of gravity only without any other stabilising element;

1. This is the only disclosure of belt moving in the direction of the conveyor and I note that it is an 'example embodiment'. However, I consider that the conveyor and the belt moving in the same direction is an essential feature of the invention. Without both moving in the same direction the carcass will not be able to be stabilised on the belt. Consequently claim 1 lacks support because it doesn't include this essential feature.

Referring now to Figure 2 it will be seen that belt 8 is inclined at an angle 9 to the 15 vertical, which may suitably be between 5 to 40 degrees, with about 5 degrees being found adequate and requiring less support by the belt. Referring back to Figure 1 a transition zone 9 is provided for the belt to move the carcass 4 from a vertical hanging position to the inclined orientation shown in Figure 2. Due to the force of gravity upon the carcass it is forced against the inclined belt and this 20 stabilizes the carcass. As the carcass now travels along a predictable path only the movement in the direction of the conveyor changes as the carcass moves (i.e. the swing element has been removed).

The experience gained from operating FACCSA v1 showed that the combination solely of gravity and an inclined belt was sufficient to stabilise the carcass against forces exerted during vertical cutting. However, the combination solely of gravity and an inclined belt was insufficient to stabilise the carcass during horizontal cutting.

1. Although Prof. Khodabandehloo was providing evidence in reference to FACCSA v1, his comments appear to be relevant/applicable to the present invention.

1. I consider that an inclined belt is essential to stabilize the carcass if there are no other stabilising features. Consequently claim 1 lacks support because it doesn't include this essential feature.

The functional relationship between the imaging system and the cutting tool

1. The description states at page 5 lines 17 to 19:

Control system 10 may calculate the position of belt 8 so that it knows the position of the carcass so that with the imaging information it can direct the robotic arm to perform the cuts whether moving or stationary.

The imaging system may provide 2D, 3D or pseudo 3D (i.e. 2D with some depth information) image information to controller 22 which may calculate one or more cutting path based on the image information received from the imaging system 15 21. The controller 22 may also calculate the weight distribution of carcass portions based on the image information and the cutting paths. The controller may also receive weight information from a sensor measuring the weight of each carcass. Controller 22 provides the cutting paths to cutter 23 so that the cutting tool may perform cuts according to the one or more cutting path.

The operation of the system may be controlled by intelligence on the imaging/cutting side (i.e. dumb belt) or operation of the belt may be synchronized with the imaging and cutting systems.

1. The description describes providing image information to the controller to calculate cutting paths. The description also provides an embodiment where the belt may be synchronized with the imaging and cutting systems.

1. All embodiments of the invention have a functional relationship between the imaging and cutting systems. I consider this to be essential to the invention. Consequently claim 1 lacks support because it doesn't include this essential feature.

Conveyor and the belt are driven at the same speed

1. In their letter of 17 November 2025 the Opponent raised an additional matter of whether the conveyor and the belt being driven at the same speed is essential to the invention. In their letter of 27 January 2026 the Applicant requested that "the Opponent's letter be disregarded as it does not address the issues raised in the Delegate's letter and therefore raises issues not within the scope of the Opposition".

1. As a first point I note that in my letter of 29 September 2025 my request for further submissions was to specific issues. I stated in the final sentence "This is not an opportunity for any other (new) issues to be raised by the parties." It is lamentable that the Opponent has used the opportunity I had provided regarding specific issues to not provide any substantive submissions on those issues, and to instead provide submissions on a different issue.

1. As a second point I note that this is an unorthodox approach in an opposition. Oppositions are predicated on the onus for the Opponent to set out the grounds of the opposition in the Statement of Grounds and Particulars. This gives the Applicant an opportunity to answer the Opponent's opposition. The Opponent raising new grounds of opposition at this stage of the opposition is undesirable.

1. Notwithstanding those above points, I will briefly consider the point raised by the Opponent. In the event that I had considered the Opponent's arguments compelling I would have given the Applicant an opportunity to address those arguments. However, as will be explained further below, I have not found the Opponent's argument compelling and so it was unnecessary to seek submissions from the Applicant.

1. In their letter of 17 November 2025 the Opponent states:

As was submitted on behalf of the Opponent during the hearing, for the invention to function, it is essential that the conveyor and the belt are driven at the same speed. If the speeds are equal, then the carcass is stabilised whilst it rests against the belt (i.e. the carcass remains static as it rests against the belt whilst the carcass is also being hung from the conveyor). Hence, the image of the carcass obtained by the imaging system prior to cutting remains relevant to cutting path calculations and cuts performed by the cutting tool. Hence, the invention can function if the speeds are both equal to zero (i.e. conveyor and belt both stopped) or the conveyor and belt both have the same non-zero speed.

However, if the speed of the conveyor differs from the speed of the belt (despite both proceeding in the same direction), the carcass cannot be stabilised by the belt. Rather, the differential between the conveyor speed and the belt speed would cause the carcass to swing longitudinally along the belt whilst it is resting against the belt and is simultaneously being hung from the conveyor. If the conveyor is moving faster than the belt, the belt would drag upon the carcass, causing the bottom of the carcass to swing longitudinally behind the top of the carcass (since the top of the carcass is being supported by the conveyor, which is moving faster than the belt). If the conveyor is moving slower than the belt, the bottom of the carcass would swing longitudinally in front of the top of the carcass because the belt would be pushing it forwards relative to the point from which the carcass hangs from the conveyor). Either way, this longitudinal movement would destabilise the carcass and render the invention non-functional. This is because the data that was obtained from the imaging system prior to cutting would no longer accurately define the position of the carcass, which would render control of the cutting tool impossible.

1. In the embodiment where the conveyor and belt move continuously, I agree that the conveyor and belt would need to move at substantially the same speed to prevent the carcasses from swinging.

1. In the embodiment where the conveyor and belt move in a stop-start manner, it is not clear that the conveyor and belt would necessarily move at substantially the same speed to prevent the carcasses from swinging. It is plausible that the belt and conveyor speeds (though moving in the same direction) could be moving at different speeds such that at the points where the carcass stops (for imaging and cutting) the carcass is stable and not swinging.

1. Overall, I am not satisfied that conveyor and the belt being driven at the same speed is an essential feature of the invention.

1. I have found three aspects of claim 1 lack support:

C) The functional relationship between the imaging system and the cutting tool

1. Claims 1-3 and 5 of the innovation patent similarly to claim 1 of the standard patent lack support. Claim 4 of the innovation patent also lacks support.

1. I have found two aspects of claim 21 lack support: the features of "the belt is inclined to the vertical" and "the functional relationship between the imaging system and the cutting tool" are essential to the invention. Thus claim 21 lacks support. The dependent claims that do not define all the features that I have found to be essential features also lack support.

1. The Applicant concedes this lack of support for claim 1 and has suggested "a combination of standard application claims 1, 2, 9, and 14 would appear to address the issues". Claim 2, 9 and 14 are reproduced below:

2. A carcass cutting system as claimed in claim 1 wherein the section of the belt opposite the cutting tool is inclined to the vertical from an upper edge of the belt to a lower edge of the belt.

9. A carcass cutting system as claimed in any one of claims 1 to 8 wherein the belt is driven in generally the same direction that carcasses are advanced along the conveyor.

14. A carcass cutting system as claimed in any one of the preceding claims including a controller which calculates one or more cutting path based on information received from the imaging system and controls the cutting tool to perform cuts according to the one or more cutting path.

1. Claim 14 when appended to claims 9, 2 and 1, appears to define all the features which I have found to be essential to the invention.

1. The Applicant is given the opportunity to propose amendments to overcome the lack of support in each of the standard application and the innovation patent. The Applicant should be mindful that the claims of the standard application and the innovation patent should not be the same as prescribed in s 64(2).

1. The claims of the standard application are novel and inventive. The claims of the innovation patent are novel and innovative.

1. Claims 1-21 of the standard application 2016429338 lack support. Although claim 14 lacks support, the specific claim dependency where claim 14 is appended to claims 9, 2, and 1 is supported.

1. Claims 1-5 of the innovation patent 2023100082 lack support.

1. Costs typically follow the event. However, several notable things happened in the course of the opposition that could alter the usual award of costs which are considered below.

1. The Opponent has been unsuccessful in their oppositions on the grounds of novelty, inventive step, and innovative step. This counts against the Opponent in the award of costs.

1. The claims of the standard application and the innovation patent have been found to lack support, however this is an issue that was raised under s 60(3). Neither party should benefit in the awards of costs on this basis.

1. The claims were amended on 23 July 2024 for the standard patent and 3 September 2024 for the innovation patent. The Applicant is taken to concede that the standard application and the innovation patent were invalid up to those points in time. This counts against the Applicant (up to those points in time) in the award of costs.

1. In the letter of 29 September 2025 I advised that I would rely upon the English translation of D6 (EP1845790B1) as it appeared to be highly relevant to the determination of opposition. This was necessitated by the Opponent's failure to file the English translation of D6 in the earlier stages of the opposition (i.e. when the SGP was filed or when the evidence in support was filed). This counts against the Opponent in the award of costs.

1. There are reasons both parties should have costs awarded against them. Overall, I consider these reasons to be largely balanced/offsetting. Consequently, I award no costs in both the opposition to the standard application and innovation patent.

b. a belt positioned below the conveyor such as to:

i. position the carcass away from its natural hanging position;

ii. stabilise the carcass by forcing it against the belt via the force of gravity only without any other stabilising element;

c. a cutting tool positioned to perform a cut whilst the carcass is against the belt; and

d. an imaging system positioned to capture an image of the carcass prior to cutting wherein the imaging system is selected from one or more of: an optical imaging system, an X-ray imaging system, a laser scanning camera, a time of flight camera and a Dual-energy X-ray absorptiometry system.

2. A carcass cutting system as claimed in claim 1 wherein the section of the belt opposite the cutting tool is inclined to the vertical from an upper edge of the belt to a lower edge of the belt.

3. A carcass cutting system as claimed in claim 1 wherein the section of the belt opposite the cutting tool is inclined between 5 to 40 degrees to the vertical from an upper edge of the belt to a lower edge of the belt.

4. A carcass cutting system as claimed in any one of claims 1 to 3 wherein the belt includes a transition zone in which the belt transitions the carcass from a freely hanging orientation to an inclined orientation.

5. A carcass cutting system as claimed in any one of claims 1 to 3 wherein the conveyor includes a laterally offset section in the region of the belt.

6. A carcass cutting system as claimed in claim 5 wherein the conveyor includes main conveyor sections; an offset section that is laterally offset with respect to the main conveyor sections and transition sections linking the ends of the offset section to the main conveyor sections.

7. A carcass cutting system as claimed in claim 5 or claim 6 wherein the belt is in the form of a continuous belt driven about spaced apart rollers.

8. A carcass cutting system as claimed in any one of claims 1 to 7 wherein the belt is formed of a plurality of hinged sections.

9. A carcass cutting system as claimed in any one of claims 1 to 8 wherein the belt is driven in generally the same direction that carcasses are advanced along the conveyor.

10. A carcass cutting system as claimed in any one of claims 1 to 9 wherein the belt is stopped during cutting.

11. A carcass cutting system as claimed in any one of claims 1 to 9 wherein the belt continues to move and the cutting tool moves with the belt during cutting.

12. A carcass cutting system as claimed in any one of the preceding claims wherein the belt is stopped during imaging of the carcass.

13. A carcass cutting system as claimed in any one of claims 1 to 11 wherein the imaging system captures an image of the carcass whilst it is moving and against the belt.

14. A carcass cutting system as claimed in any one of the preceding claims including a controller which calculates one or more cutting path based on information received from the imaging system and controls the cutting tool to perform cuts according to the one or more cutting path.

15. A carcass cutting system as claimed in claim 14 wherein the controller calculates the weight distribution of carcass portions defined by the one or more cutting paths.

16. A carcass cutting system as claimed in claim 14 or claim 15 wherein the controller synchronises operation of the imaging system and cutting tool with movement of the belt.

17. A carcass cutting system as claimed in any one of claims 14 to 16 wherein the imaging system autonomously detects and obtains image information whilst the belt is continuously driven.

18. A carcass cutting system as claimed in claim 17 wherein the cutting tool includes a vision system that locates the cutting tool relative to a carcass whilst performing cuts on a moving carcass.

19. A carcass cutting system as claimed in claim 14 or claim 15 wherein the controller is configured to stop a carcass on the belt in front of the imaging system during imaging.

20. A carcass cutting system as claimed in claim 14 or claim 15 or claim 18 wherein the controller is configured to stop a carcass on the belt in front of the cutting tool and stop for the cutting tool to effect a required cut.

21. A method of performing an automated cut on a carcass comprising the steps of:

b. advancing the carcass along the conveyor against a belt moving in the direction of the conveyor which is positioned with respect to the conveyor such that the carcass is stabilised by forcing it against the belt via the force of gravity only without any other stabilising element;

c. imaging the carcass whilst it is against the belt using an imaging system selected from one or more of: an optical imaging system, an X-ray imaging system, a laser scanning camera, a time of flight camera and a Dual-energy X-ray absorptiometry system; and

d. performing a cut on the carcass whilst it is against the belt.

22. A method as claimed in claim 21 wherein the carcass and belt continue to move together as the carcass is cut.

23. A method as claimed in claim 21 wherein the carcass and belt stop when the carcass is cut.

24. A method as claimed in any one of claims 21 to 23 wherein the carcass is imaged prior to cutting whilst against the belt.

25. A method as claimed in any one of claims 21 to 23 wherein the belt is stopped whilst the carcass is imaged.

26. A method as claimed in any one of claims 21 to 24wherein the belt is driven

b. a belt positioned below the conveyor such as to:

i. position the carcass away from its natural hanging position;

ii. stabilise the carcass by forcing it against the belt via the force of gravity only;

c. a cutting tool positioned to perform a cut whilst the carcass is against the belt; and

d. an imaging system positioned to capture an image of the carcass prior to cutting whilst the carcass is against the belt, wherein the imaging system is selected from one or more of: an optical imaging system, an X-ray imaging system, a laser scanning camera, a time of flight camera and a Dual-energy X-ray absorptiometry system.

b. a belt positioned below the conveyor such as to:

i. position the carcass away from its natural hanging position;

ii. stabilise the carcass by forcing it against the belt via the force of gravity only without any other stabilising element;

c. a cutting tool positioned to perform a cut whilst the carcass is against the belt; and

d. an imaging system positioned to capture an image of the carcass prior to cutting whilst the carcass is against the belt, wherein the imaging system is selected from one or more of: an optical imaging system, an X-ray imaging system, a laser scanning camera, a time of flight camera and a Dual-energy X-ray absorptiometry system.

b. a belt positioned below the conveyor such as to:

i. position the carcass away from its natural hanging position;

ii. stabilise the carcass by forcing it against the belt via the force of gravity only without any other stabilising element;

c. a cutting tool positioned to perform a cut whilst the carcass is moving and against the belt; and

d. an imaging system positioned to capture an image of the carcass prior to cutting, whilst it is moving and against the belt, wherein the imaging system is selected from one or more of: an optical imaging system, an X-ray imaging system, a laser scanning camera, a time of flight camera and a Dual-energy X-ray absorptiometry system.

4. A carcass cutting system as claimed in any one of the preceding claims including a controller which calculates one or more cutting path based on information received from the imaging system and controls the cutting tool to perform cuts according to the one or more cutting path.

5. A method of performing an automated cut on a carcass comprising the steps of:

b. advancing the carcass along the conveyor against a belt moving in the direction of the conveyor which is positioned with respect to the conveyor such that the carcass is stabilised by forcing it against the belt via the force of gravity only;

c. imaging the carcass whilst it is against the belt using an imaging system selected from one or more of: an optical imaging system, an X-ray imaging system, a laser scanning camera, a time of flight camera and a Dual-energy X-ray absorptiometry system; and

d. performing a cut on the carcass whilst it is against the belt.