Action Composites Hightech GmbH v Mubea Carbo Tech GmbH - [2022] APO 62

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Action Composites Hightech GmbH v Mubea Carbo Tech GmbH [2022] APO 62
Patent Application: 2015340539

Title:Wheel for a vehicle

Patent Applicant: Mubea Carbo Tech GmbH

Opponent:Action Composites Hightech GmbH

Delegate:Xavier Gisz

Decision Date: 8 September 2022

Hearing Date: 17 May 2022, in Video Conference

Catchwords: PATENTS - section 59 – opposition to the grant of a patent – grounds of novelty, inventive step, utility, support, sufficient disclosure – claims 1-3, 10-15, 17, 18 and 19 lack novelty – costs awarded against the applicant

Representation: Counsel for the applicant: Ben Fitzpatrick
Patent attorney for the applicant: William Hird of Davies Collison Cave
Patent attorney for the opponent: Christian Schieber of Griffith Hack

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2015340539

Title:Wheel for a vehicle

Patent Applicant: Mubea Carbo Tech GmbH
Date of Decision: 8 September 2022
DECISION

Claims 1-3, 10-15, 17, 18 and 19 lack novelty in light of D1 (WO 2016/037611).

The applicant has a period of two months to propose amendments to overcome the identified deficiencies.
Costs are awarded according to Schedule 8 against the Applicant, Mubea Carbo Tech GmbH.
REASONS FOR DECISION

Background

Patent application 2015340539 (the Application) in the name of Mubea Carbo Tech GmbH (the Applicant) is a national phase entry of PCT/EP2015/075172 (publication number WO2016/066769) with a priority date of 31 October 2014 and filing date of 29 October 2015.
The Application was accepted on 23 May 2019. A notice of opposition was filed on 13 September 2019 by ThyssenKrupp Carbon Components GmbH. The right and interest in the opposition was transferred to Action Composites Hightech GmbH (the Opponent) on 11 November 2021. A Statement of Grounds and Particulars was filed on 13 December 2019. Evidence in Support was filed on 13 March 2020.
On 27 March 2020 the Opponent requested to amend the Statement of Grounds and Particulars. The amendment to the SGP was allowed on 16 April 2020.
On 20 May 2020 the Applicant requested a three month extension of time to file the evidence in answer. The extension of time was allowed on 4 June 2020.
On 21 August 2020 the Applicant proposed amendments to the specification and requested that the opposition be stayed pending the determination of allowability of the amendments. The opposition was stayed until two weeks after the Commissioner notified the parties that the amendments had been allowed, refused or withdrawn.
The amendments were deemed allowable on 24 September 2020 and advertised for opposition on 8 October 2020. The Commissioner informed the parties that the amendments were allowed on 17 December 2020.
Evidence in Answer was filed on 22 December 2020 (although completion of the evidence in answer was only acknowledged by a delegate of the Commissioner on 5 January 2021).
On 5 March 2021 the Opponent requested an extension of time to file evidence in Reply. An extension of one month was granted. Evidence in reply was filed on 6 April 2021.
Regulation 5.23 – first round
On 2 June 2021 the Applicant indicated that they would provide further information for the Commissioner to consider under regulation 5.23. They also indicated that they would challenge whether the evidence in reply was properly in reply.
On 20 September 2021 the Applicant filed a declaration by Christoph Renner to be considered by the Commissioner under regulation 5.23
On 14 October 2021 a Delegate informed the parties that the Commissioner intends to refer to the Renner declaration (except for paragraphs 12 and 13) under regulation 5.23.
On 14 December 2021 the Opponent filed a declaration by Andreas Büter in response to the Renner declaration.
Regulation 5.23 – second round
On 16 May 2022 (the day before the hearing) the Opponent provided information (a declaration by Christian Schieber and annexures CS-1 and CS-2) for the Commissioner to consider under regulation 5.23. Annexure CS-1 of this evidence is a copy of WO 2016/037611 and its priority document (DE 10 2014 112 980.6), wherein these documents also contain annotations by Mr Scheiber. Annexure CS-2 is a copy of annexure AB-5 of the first Büter declaration (which is a copy of WO 2016/037611 and its English translation); this annexure also contains annotations by Mr Schieber.
During the hearing I stated that the priority document (German patent application DE 10 2014 112 980) was clearly highly relevant and was likely determinative of the opposition (since the ‘whole of contents’ novelty ground of opposition was dependent upon this document being considered). I stated that I would consider the information under the provisions of regulation 5.23(1).
On 18 May 2022 I wrote to the parties stating:
“I have now realised that German patent application 10 2014 112 980.6 and its English translation were already provided in the Evidence in Support in Exhibit ST-2 which accompanied the declaration of Stephanie Tham.
In light of this realisation, I now intend to not rely upon the information under regulation 5.23(1).
During the hearing, the Applicant decided to not make submissions in relation to the novelty of the claims of the opposed application with respect to WO 2016/037611 because they believed that the priority document was not supplied during the evidentiary stages of the opposition and so the ‘whole of contents’ novelty ground of opposition was not properly supported.
Because Applicant’s decision to not provide submissions on this point was based on an incorrect belief, it is appropriate that they be given the opportunity to make submissions following the hearing.
The Applicant is invited to make submissions relating to the ‘whole of contents’ novelty of the claims with respect to WO 2016/037611 (and the priority document DE 10 2014 112 980.6) within two (2) weeks of the date of this letter.”
Regulation 5.23 – third round
On 1 June 2022 (two weeks after the hearing) the Applicant filed another declaration by Christoph Renner. This declaration was prompted by my comment in the hearing about the (countersunk) recess in D1 which appeared to provide a flat surface in the otherwise curved surface of the wheel rim; I noted at the hearing that this aspect of D1 (to which the evidence was heretofore silent) appeared to be determinative of the novelty of the claims (as per the guidance articulated in Merial Limited v Bayer Intellectual Property GmbH [2015] APO 16 at paragraph 24).
On 2 June 2022 I wrote to the parties stating I would rely on the Renner declaration under regulation 5.23. I allowed the Opponent one month to provide responding information under regulation 5.23(2)(c).
On 4 July 2022 the Opponent filed a declaration by Andreas Büter responding to the Renner declaration.
The grounds of opposition
The Statement of Grounds and Particulars opposed the grant of the patent on the following grounds: novelty, inventive step, utility, clarity, support, and sufficient disclosure. The opponent’s submissions limited the grounds to: novelty, inventive step, utility, support, and sufficient disclosure.
The Evidence
Evidence in support
Declaration of Andreas Büter dated 11 March 2020 together with Annexure AB-1 to AB-13 (Büter #1).
Evidence in answer
Declaration of Christoph Renner dated 21 December 2020 together with Annexure CR-1 to CR-3 (Renner #1).
Evidence in reply
Declaration of Andreas Büter dated 02 April 2021 (Büter #2).
Regulation 5.23
The following information is relied upon under regulation 5.23:
·Declaration of Christoph Renner dated 16 September 2021 (Renner #2)
·Declaration of Andreas Büter dated 13 December 2021 together with Annexure AB-14 (Büter #3)
·Declaration of Christoph Renner dated 1 June 2022 (Renner #3)
·Declaration of Andreas Büter dated 1 July 2022 (Büter #4)
The relevant legislation
The present application was filed on 29 October 2015 so substantive amendments to the Patents Act1990 brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act2012, effective 15 April 2013, apply in the present case.
The invention
The present invention is directed to a wheel for a vehicle comprising a rim and a wheel center, and in particular, a means of connecting the rim to the wheel center.
The description states at lines 10 to 12:
“For the wheels known from the prior art in general the junction between the wheel center and the rim turns out to be critical with respect to the durability of a wheel.”
The description states at page 5 lines 15 to 18:
“…[P]henomena related to contact corrosion and contact mechanics in the area of a junction between the wheel center and adjacent rim have a major impact on the durability of a wheel. However, these problems have not been addressed in the wheels known from the prior art.”
The description states at page 6 lines 7 to 12:
“…[A]ccording to one variant of the invention, for some types of wheels the intermediate layer may allow direct contact between portions of the at least one first and the at least one second contact area. Such variants may by advantageous in order to optimize the distribution of contact pressure in some parts of the contact areas for material pairings which are actually not prone to contact corrosion.”
A preferred embodiment of the invention is shown in figures 1,2, 8 and 9. The significant features shown in the figures are: wheel rim (2), wheel center (3), spoke (4), intermediate layer (22), screw (24), and bushing (20):
Claims
The specification (as amended after acceptance) ends with 25 claims; 5 independent claims and 20 dependent claims.
The independent claims are as follows:
1. A wheel comprising
a. a rim and a wheel center interconnected to the rim;
b. wherein the rim comprises at least one first contact area and the wheel center comprises at least one second contact area which are in a mounted position aligned with respect to each other;
c. wherein an intermediate layer is arranged between the at least one first and the at least one second contact area preventing at least partially direct contact between the at least one first and the at least one second contact area;
d. at least one insert is arranged in the rim, said at least one insert extending from the rim into the wheel center, wherein the insert is a bushing; and,
e. the intermediate layer is a preformed three-dimensional body which is at least partially preformed to the shape of the at least one first and/or the at least one second contact area.
21. A wheel comprising
a. a rim and a wheel center interconnected to the rim;
b. wherein the rim comprises at least one first contact area and the wheel center comprises at least one second contact area which are in a mounted position aligned with respect to each other;
c. wherein an intermediate layer is arranged between the at least one first and the at least one second contact area preventing at least partially direct contact between the at least one first and the at least one second contact area;
d. at least one insert is arranged in the rim, said at least one insert extending from the rim into the wheel center, wherein the insert is a bushing; and,
e. the intermediate layer comprises multiple layers made from different materials.
23. A wheel comprising
a. a rim and a wheel center interconnected to the rim;
b. wherein the rim comprises at least one first contact area and the wheel center comprises at least one second contact area which are in a mounted position aligned with respect to each other;
c. wherein an intermediate layer is arranged between the at least one first and the at least one second contact area preventing at least partially direct contact between the at least one first and the at least one second contact area;
d. at least one insert is arranged in the rim, said at least one insert extending from the rim into the wheel center, wherein the insert is a bushing; and,
e. the intermediate layer comprises at least one sealing area.
24. A wheel comprising
a. a rim and a wheel center interconnected to the rim;
b. wherein the rim comprises at least one first contact area and the wheel center comprises at least one second contact area which are in a mounted position aligned with respect to each other;
c. wherein an intermediate layer is arranged between the at least one first and the at least one second contact area preventing at least partially direct contact between the at least one first and the at least one second contact area;
d. at least one insert is arranged in the rim, said at least one insert extending from the rim into the wheel center; and,
e. the intermediate layer comprises at least one sealing bead that is arranged circumferentially at a boundary of the intermediate layer in order to prevent moisture, air, dust or other substances from entering into the interstitial space between the first and the second contact area.
25. A wheel comprising
a. a rim and a wheel center interconnected to the rim;
b. wherein the rim comprises at least one first contact area and the wheel center comprises at least one second contact area which are in a mounted position aligned with respect to each other;
c. wherein an intermediate layer is arranged between the at least one first and the at least one second contact area preventing at least partially direct contact between the at least one first and the at least one second contact area;
d. at least one insert is arranged in the rim, said at least one insert extending from the rim into the wheel center;
e. the insert is a flanged bushing surrounding a screw which is acting as a connection element, wherein the flanged bushing serves as a washer to distribute the forces applied by the connecting screw head to the rim; and,
f. at least one seal is arranged between the screw’s head and the rim and/or the bushing in order to prevent moisture and air from entering the space between the connection element, rim and bushing.
Construction Principles
While the rules of construction for an Australian patent specification are well summarized in Decor Corp v Dart Industries [1988] FCA 399; 13 IPR 385, the correct approach to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70, 81 IPR 228 at [118] – [120]:
“the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear ... while the claims define the monopoly claimed in the words of the patentee's choosing, the specification should be read as a whole ... it is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification ... terms in the claim which are unclear may be defined or clarified by reference to the body of the specification”
Novelty legal principles
A claimed invention is deprived of novelty if it has been given to the public before the priority date, either by prior use of a product or process, or by publication of information that equates to the claimed invention (Justice Bennett in Danisco A/S v Novozymes A/S (No 2) [2011] FCA 282 at [248]; [2011] FCA 282; (2011) 91 IPR 209 at [248]). It is well established that the general test for anticipation is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20]; [1977] HCA 19; (1977) 137 CLR 228 at 235:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement.”
This test is satisfied if the alleged anticipation discloses all of the essential features of the invention as claimed (Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40 at [19]; [1990] FCA 40; (1990) 16 IPR 545 at 549). To meet this requirement, the prior art must contain “clear and unmistakable directions” to the claimed invention (Pfizer Overseas Pharmaceuticals v Eli Lilly and Co [2005] FCAFC 224 at [314]; [2005] FCAFC 224; (2006) 68 IPR 1 at 67 [314]). However, if the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee’s claim but would be at least as likely to be carried out in such a way that would not do so, the patentee’s claim will not be anticipated (General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd (1971) 1A IPR 121 at 138). Where a prior publication does not explicitly disclose all of the integers of the claimed invention, it would still deprive the claimed invention of novelty if (i) the skilled reader understands the disclosures of the prior publication to include a missing integer, and (ii) if the document contains a direction to use a process that inevitably or inexorably results in something within the claim as set out in Danisco (No 2) [2011] FCA 282 at [248]; [2011] FCA 282; (2011) 91 IPR 209 at [248] (although that decision was overturned on appeal in Novozymes A/S v Danisco A/S [2013] FCAFC 6 the principles here were not disturbed).
Documents that are published before the priority date are part of the prior art base as defined in part (a) of the definition of “prior art base” in Schedule 1 of the Act.
Documents that are published after the priority date may form part of the prior art base as defined in part (b)(ii) if the three additional conditions are met. These are known as “whole of contents” prior art documents.
The definition of “prior art base” given in Schedule 1 of the Act is reproduced below:
"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.
(b) in relation to deciding whether an invention is or is not novel:
(i) information of a kind mentioned in paragraph (a); and
(ii) information contained in a published specification filed in respect of a complete application where:
(A) if the information is, or were to be, the subject of a claim of the specification, the claim has, or would have, a priority date earlier than that of the claim under consideration; and
(B) the specification was published on or after the priority date of the claim under consideration; and
(C) the information was contained in the specification on its filing date.
Novelty
WO2016/037611 A1 (D1)
D1 is asserted by the Opponent as a “whole of contents” prior art document. I will assess against the criteria to determine if it is eligible as a “whole of contents” prior art document.
Document D1 is a PCT application. A PCT application which has designated Australia is treated as an Australian patent application under the Act.
The priority date of D1 is 9 September 2014 which is before the priority date (31 October 2014) of the opposed application. I have reviewed the priority document and am satisfied that D1 is entitled to the priority date claimed. Consequently, document D1 satisfies condition (A).
D1 was published on 17 March 2016. This publication was after the priority date (31 October 2014) of the presently opposed application. Consequently, document D1 satisfies condition (B).
Document D1 is unamended and thus it logically follows that the information contained in the specification was the same information at the filing date. Consequently, document D1 satisfies condition (C).
In summary, document D1 has satisfied the conditions necessary for a document to be considered prior art documents under part (b)(ii) of the definition of prior art base. Under section 7(1)(c) this is a relevant prior art document in the consideration of novelty (i.e., a ‘whole of contents’ prior art document). Notably, this document is not prior art in the consideration of inventive step.
Claim 1

An embodiment of D1 is shown in figure 5:
The features of this figure are: wheel rim (1.1), wheel spider (2.1), elongated sleeve (4.2), bolt (3.2) and perforated disk (10).
The corresponding embodiment is shown in the priority document DE 10 2014 112 980.6 at figure 6:
The features of this figure are: wheel rim (1), wheel spider (2), elongated sleeve (4), bolt (3) and perforated disk (5).
Features a to d of the claim are clearly disclosed in this embodiment of D1 and the priority document as follows:
a. a rim and a wheel center interconnected to the rim
D1 discloses a wheel rim (1) and a wheel center (the wheel spider (2.1)) interconnected to the rim.
b. wherein the rim comprises at least one first contact area and the wheel center comprises at least one second contact area which are in a mounted position aligned with respect to each other
D1 shows (in figure 5) the contact areas of the rim and the wheel center.
c. wherein an intermediate layer is arranged between the at least one first and the at least one second contact area preventing at least partially direct contact between the at least one first and the at least one second contact area;
D1 shows an intermediate layer (the perforated disk (10)) arranged between the at least one first and the at least one second contact area preventing at least partially direct contact between the at least one first and the at least one second contact areas.
d. at least one insert is arranged in the rim, said at least one insert extending from the rim into the wheel center, wherein the insert is a bushing
D1 shows bushing (elongate sleeve (4.2)) extending from the rim into the wheel center.
e. the intermediate layer is a preformed three-dimensional body which is at least partially preformed to the shape of the at least one first and/or the at least one second contact area.
The only remaining feature to be determined if it is disclosed in D1 and the priority document (DE 10 2014 112 980.6) is feature e: “the intermediate layer is a preformed three-dimensional body which is at least partially preformed to the shape of the at least one first and/or the at least one second contact area.”
As noted above, my comments during the hearing prompted the parties to file additional information under regulation 5.23. Specifically, the evidence and submissions from the parties filed before the hearing did not address the countersunk recess area in the figures of D1, and so I invited parties to provide information to address the disclosure of the countersunk recess area in the figures of D1. The reason the countersunk recess is so significant is that if there is a flat countersunk recess then a flat intermediate component will be considered to be ‘preformed’ to the shape of the contact area. On the other hand, if D1 does not disclose a flat countersunk recess then a flat intermediate component will not be considered preformed to the shape of the contact area (since the contact area is otherwise not flat).
Renner#1 states at paragraph 30:
“Document D1 (WO2016037611 A1) referred to in the Büter Declaration and attached to that Declaration as AB-5 describes a wheel assembly including a perforated disk (10) which is located between the contact surfaces of the wheel rim and wheel spider/disk. In my view, the perforated disk (10) is not a preformed three-dimensional body as required by claim 1 of the application because the perforated disk is not preformed to a certain shape prior to assembly. In addition, I would not consider the perforated disk (10) of D1 as a three-dimensional body that is partially preformed to the shape of the at least one first and/or the at least one second contact areas. Rather the perforated disk provides a flat surface which may be subject to deformation or cracking once the described wheel is assembled.”
Büter#2 states at paragraph 40:
“In D1, the geometry of the wheel center to wheel rim connection zone is such that there is no curvature in circumferential direction of the wheel. The interface area is flat (ie no curvature).”
Renner#3 states at paragraph 9:
“In the below image is a portion of Figure 6 included in German patent application no. DE 10 2014 112 980.6. The image shows the lower right hand section of the figure where the second spoke is in contact with the rim. I have marked in a red circle two lines which appear to me to be parallel to one another. The line on the left side of the red circle depicts what I understand to be part of the curved surface of the wheel rim. I understand the surface of the wheel rim is curved due to the orientation of the second spoke in Figure 6. The line on the right side of the red circle depicts the boundary of the recessed area adjacent the second spoke. Because both lines appearing in the red circle appear to be parallel to one another, this would indicate to me that the surface of the recessed area is also curved, and likely to be of a similar shape to the curved surface of the wheel rim.”
Büter#4 states at paragraphs 12 and 13:
“I am not in agreement with the conclusions drawn by Mr Renner in paragraph 9 that figure 6, which clearly is not a formal technical drawing depicting an actual wheel assembly, suggests that the recessed areas are ‘likely to be of a similar shape to the curved surface of the wheel rim’, based on the observation that the two lines in the illustration at paragraph 9 are parallel.
As I will seek to explain below, in my view, from an engineering perspective, it is extremely likely the recessed areas will have a flat, non-curved bottom surface. I note also that Mr Renner at paragraph 10 himself acknowledges discrepancies in the illustration of figure 6 of the Priority Document, which given the figures in the Priority Document and D1 are strictly speaking not technical drawings, is not entirely surprising.”
Professor Büter explains why the recessed area would be flat at paragraphs 32 to 34:
“For contact surfaces that are not flat (e.g. single or double-curved), the profile shape tolerance mentioned above would come into play here. That is, the profile shape of all contact surfaces together must correspond in shape, and such would need to be machined to exacting tolerances.
Realizing and providing for curved interface surfaces where the wheel parts are connected to each other, either directly or with an intermediary body (such as the perforated disc) is in my opinion far more complex than aligning any given number of spokes having flat contact surfaces at their respective terminal ends (rather than curved end faces) with an equal number of flat surfaces machined into the wheel rim part at the relevant positions where the spokes contact the wheel rim.
Machining of discrete flat-bottom surface areas into the inner wheel rim part represents a simpler process than creating a curved surface.”
Professor Büter provides an annotated version of figure 2 of the priority document:
My understanding of Figure 5 of D1 and Figure 6 of the priority document is as follows: These figures show both a cross section (foreground) where the wheel spider arm is connected to the wheel rim, while also showing in the background a view of another wheel spider arm connected to the wheel rim. The background view in figure 6 appears to be a direct side-view of the inner surface since the concentric circular edges of the wheel rim are illustrated as straight lines.
To help understand the terminology I have used here I provide the following diagram of the countersunk recess, with the dashed lines indicating the edges of the recess that would not be visible when viewed from the front oblique perspective (as shown in Figure 5 of D1 and Figure 6 of the priority document):
Mr Renner has inferred that because the front top edge of the curved recess is straight and parallel with the closest edge of the wheel rim, then the base of the recess is not flat. However, I consider Mr Renner’s explanation unpersuasive since the shape of the front top edge is not relevant in determining whether the shape of the base/bottom of the recess is flat.
I further consider that Professor Büter’s explanation of why the base of the (countersunk) recess would be considered flat to a person skilled the art to be persuasive. I am satisfied that the base of the (countersunk) recess shown where the wheel spider interfaces with the wheel rim in figure 5 of D1 and figure 6 of DE 10 2014 112 980.6 is flat.
Both Mr Renner and Professor Büter agree that the top and bottom surfaces of the perforated disk in figure 5 of D1 and figure 6 of DE 10 2014 112 980.6 are also flat. Thus, I consider that the intermediate layer (the perforated disk) is a preformed three-dimensional body which is at least partially preformed to the shape (flat) of the at least one first and/or the at least one second contact area (which are also flat). In other words, the perforated disk is considered ‘preformed to the shape of the … contacts areas’ because it is same shape as the contact areas (before the wheel is assembled).
Thus claim 1 lacks novelty in light of D1.
Dependent claims 2-20
Claims 2, 3
Claims 2 and 3 are as follows:
Claim 2: A wheel according to claim 1, wherein the intermediate layer completely prevents direct contact between the at least one first and the at least one second contact area.
Claim 3: A wheel according to any one of the preceding claims, wherein the intermediate layer comprises at least one load bearing area / section.
The intermediate layer in D1 prevents direct contact between the first and second contact areas and is load bearing. Consequently claims 2 and 3 lack novelty in light of D1.
Claims 4-7
Claims 4-7 are as follows:
Claim 4: A wheel according to any one of the preceding claims, wherein the intermediate layer comprises at least one sealing area.
Claim 5: A wheel according to claim 4, wherein the at least one sealing area is arranged circumferentially of the intermediate layer.
Claim 6: A wheel according to claim 5, wherein the at least one sealing area is made from an elastic material.
Claim 7: A wheel according to claim 6, wherein the elastic material is a FKM or a vulcanized rubber or a silicone or a nitrile butadiene rubber (NBR) or an EPDM rubber.
Büter#1 states in “TABLE 1 — Patent Claims v D1”:
“On page 13 (lines 15-19) of D1, D1 mentions that due to the perforated disk (10), the wheel disk can be attached to the wheel rim without contact to reduce the risk of contact corrosion. To me this means that the perforated disk (10) must have some sealing function because the contact surfaces will be prone to corrosion if there is no sealing (e.g. through water ingress).”
The translation of D1 states at page 13 lines 15-19:
“In addition, the wheel disk can thereby be attached to the wheel rim without contact, and therefore the risk of contact corrosion between the wheel rim and wheel disk can be minimized and better compatibility of the thermal expansion can be achieved.”
I understand this paragraph to be merely explaining the function of the intermediate layer: to connect the “wheel disk” (which I understand to mean the wheel center) and the wheel rim without direct contact between the wheel center and wheel rim.
D1 does not disclose the intermediate layer to have a sealing area. Thus, claim 4 and the claims dependent thereon (claims 5-7) are novel in light of D1.
Claims 8, 9
Claims 8 and 9 are as follows:
Claim 8: A wheel according to any one of the preceding claims, wherein the intermediate layer comprises a metal layer.
Claim 9: A wheel according to claim 8 of the preceding claims, wherein the metal layer is coated by a polymeric material and/or a ceramic and/or a glass.
D1 describes the characteristics of the perforated disk (intermediate layer) in the translated description at page 26 line 34 to page 27 line 4:
“In the final installation state of the vehicle wheel, the perforated disk 10 is arranged between the contact surfaces of the inner side of the rim base and the attachment side of the spoke end of the wheel spider 2.1. By suitable selection of material and configuration, the perforated disk can be used to change and to set the friction conditions between the contact surfaces in order to further reduce the required pretensioning force of the countersunk-head screw bolt 3.2.”
D1 does not disclose what material the perforated disk is made from. I see no reason why it would be inherent that the perforated disk would be made of metal.
Claim 8 is novel in light of D1.
As a minor point, I note that the phrasing “…according to claim 8 of the preceding claims…” is awkward, but not ambiguous. I understand claim 9 to be dependent on claim 8.
As claim 8 is novel it follows that claim 9 is also novel in light of D1.
Claims 10-15
Claims 10-15 are as follows:
Claim 10: A wheel according to any one of the preceding claims, wherein at least one connection element interconnects the at least one first and the at least one second contact area.
Claim 11: A wheel according to claim 10, wherein the connection element protrudes the at least one intermediate layer.
Claim 12: A wheel according to either claim 10 or 11, wherein the connection element is a screw or a bolt or a rivet.
Claim 13: A wheel according to claim 12, wherein the connection element protrudes the rim at the rim well or in a region between the rim well and the outer hump or in a region between the outer hump and the outer rim edge.
Claim 14: A wheel according to either claim 12 or 13, wherein the connection element is essentially perpendicular to at least part of the intermediate layer.
Claim 15: A wheel according to any one of claims 10 to 14, wherein the connection element is at least partially embedded in an adhesive.
D1 disclose a connection element (a screw bolt) which interconnects the contact areas through the intermediate layer (perforated disk). The head of the screw bolt protrudes the rim. The screw bolt is perpendicular to the perforated disk. The screw bolt is partially embedded in an adhesive (D1 translation page 4 line 25). Thus claims 10-15 lack novelty in light of D1.
Claim 16
Claim 16 is as follows:
Claim 16: A wheel according to any one of the preceding claims, wherein the intermediate layer comprises an adhesive that mechanically interconnects the at least one first and the at least one second contact area.
D1 does not disclose an adhesive between the intermediate layer and contact area. Claim 16 is novel in light of D1.
Claims 17, 18
Claims 17 and 18 are as follows:
Claims 17: A wheel according to any of the preceding claims, wherein the rim and/or the wheel center are made from a material chosen from the group consisting of steel, aluminum, magnesium, titanium, fiber reinforced plastic with a fiber material made from carbon, aramide, glass, basalt, steel.
Claim 18: A wheel according to any one of the preceding claims, wherein the rim and the wheel center are made from different materials.
D1 and the priority document disclose the wheel rim and the wheel center to be made of the materials defined in these claims. For example, the translation of D1 at page 27 lines 21 to 24:
Fig. 6 illustrates a detail of a vehicle wheel according to the invention consisting of a wheel rim 1.2 made of aluminum and a wheel spider 2.1 made of aluminum.
D1 at page 1 lines 18 to 20 states:
“For designs in the form of a lightweight vehicle wheel, use is made, for example, of wheel rims or wheel disks of light metal or fiber reinforced plastic.”
Although the materials of D1 in the embodiment with an intermediate layer and bushing (figure 5) is not disclosed, the entire specification does not mention the wheel being made of any material except those listed in claim 17. Consequently, I consider it inherent that the embodiment of figure 5 in D1 discloses a wheel with the wheel rim and/or wheel center made from the materials listed in claim 17.
D1 discloses the use of different materials for the wheel center and wheel rim at page 6 lines 1-2:
“Using the material pairing of aluminum for the light metal wheel spider and plastic for the rim base…”
D1 discloses at page 27 lines 22-24:
“Fig. 6 illustrates a detail of a vehicle wheel according to the invention consisting of a wheel rim 1.2 made of aluminum and a wheel spider 2.1 made of aluminum.”
Thus, there are disclosures in D1 of the wheel rim and wheel center being made of the same material in some embodiments and different material in other embodiments. There is no explicit disclosure of what materials the wheel rim and wheel center are made from in the embodiment shown in figure 5. I consider it inherent that in the embodiment in figure 5 the wheel rim and wheel center could be made with either the same materials or different materials. Consequently, claim 18 lacks novelty in light of D1.
Claims 19, 20
Claims 19 and 20 are as follows:
Claim 19: A wheel according to any one of the preceding claims, wherein the intermediate layer comprises an electrically insulating material.
Claim 20: A wheel according to claim 19, wherein the electrically insulating material comprises a rubber and/or a silicone and/or glass fibers and/or a ceramic.
D1 states in the translated description at page 13 lines 15 to 20:
“In addition, the wheel disk can thereby be attached to the wheel rim without contact, and therefore the risk of contact corrosion between the wheel rim and wheel disk can be minimized and better compatibility of the thermal expansion can be achieved.”
Büter#1 states:
“Because the main function of the perforated disk (10) is to reduce the risk of contact corrosion (page 27, lines 14-20, of D1), to me this means that the perforated disk must be made of an electrically insulating material, because corrosion occurs when there is an electrical (conductive) connection between two materials of different electrochemical potential, as I mentioned in paragraph 33 to 35 above.”
D1 does not explicitly disclose what material the perforated disk is made from. I consider that when the rim and wheel center were made from different materials the prevention of contact corrosion can only be achieved by making the intermediate layer from an insulating material. Consequently, I consider that the disclosure in D1 of minimising contact corrosion is an inherent disclosure of the intermediate layer being formed from an insulating material. Claim 19 lacks novelty in light of D1.
I consider the materials which would be suitable for forming an insulating intermediate layer extends beyond the list provided in claim 20. For example, a variety of strong polymers could be suitable. Consequently, I do not consider it to be inherent that the intermediate layer in D1 would be chosen from the list in claim 20. Consequently, claim 20 is novel in light of D1.
Claims 21, 22
Claims 21 and 22 are as follows:
Claim 21: A wheel comprising
a. a rim and a wheel center interconnected to the rim;
b. wherein the rim comprises at least one first contact area and the wheel center comprises at least one second contact area which are in a mounted position aligned with respect to each other;
c. wherein an intermediate layer is arranged between the at least one first and the at least one second contact area preventing at least partially direct contact between the at least one first and the at least one second contact area;
d. at least one insert is arranged in the rim, said at least one insert extending from the rim into the wheel center, wherein the insert is a bushing; and,
e. the intermediate layer comprises multiple layers made from different materials.
Claim 22. A wheel according to claim 21, wherein the intermediate layer comprises a layer made from a continuum material selected from a material including plastic, and a layer made from a noncontinuum material, selected from a material including fabric.
D1 does not disclose the intermediate layer to be made of multiple layers of different materials. Claims 21 and 22 are novel in light of D1.
Claims 23, 24
Claims 23 and 24 are as follows:
Claim 23: A wheel comprising
a. a rim and a wheel center interconnected to the rim;
b. wherein the rim comprises at least one first contact area and the wheel center comprises at least one second contact area which are in a mounted position aligned with respect to each other;
c. wherein an intermediate layer is arranged between the at least one first and the at least one second contact area preventing at least partially direct contact between the at least one first and the at least one second contact area;
d. at least one insert is arranged in the rim, said at least one insert extending from the rim into the wheel center, wherein the insert is a bushing; and,
e. the intermediate layer comprises at least one sealing area.
Claim 24: A wheel comprising
a. a rim and a wheel center interconnected to the rim;
b. wherein the rim comprises at least one first contact area and the wheel center comprises at least one second contact area which are in a mounted position aligned with respect to each other;
c. wherein an intermediate layer is arranged between the at least one first and the at least one second contact area preventing at least partially direct contact between the at least one first and the at least one second contact area;
d. at least one insert is arranged in the rim, said at least one insert extending from the rim into the wheel center; and,
e. the intermediate layer comprises at least one sealing bead that is arranged circumferentially at a boundary of the intermediate layer in order to prevent moisture, air, dust or other substances from entering into the interstitial space between the first and the second contact area.

D1 does not disclose the intermediate layer to comprise a sealing area or a sealing bead. Claims 23 and 24 are novel in light of D1.
Claim 25

100. Claim 25 is as follows:
Claim 25. A wheel comprising
a. a rim and a wheel center interconnected to the rim;
b. wherein the rim comprises at least one first contact area and the wheel center comprises at least one second contact area which are in a mounted position aligned with respect to each other;
c. wherein an intermediate layer is arranged between the at least one first and the at least one second contact area preventing at least partially direct contact between the at least one first and the at least one second contact area;
d. at least one insert is arranged in the rim, said at least one insert extending from the rim into the wheel center;
e. the insert is a flanged bushing surrounding a screw which is acting as a connection element, wherein the flanged bushing serves as a washer to distribute the forces applied by the connecting screw head to the rim; and,
f. at least one seal is arranged between the screw’s head and the rim and/or the bushing in order to prevent moisture and air from entering the space between the connection element, rim and bushing.

101. D1 does not disclose a seal between the screw head and the rim or bushing. Claim 25 is novel in light of D1.
Conclusion of D1
102. Claims 1-3, 10-15, 17, 18 and 19 lack novelty in light of D1 (WO 2016/037611).
D2 - WO2015/106760 A1 (D2)
103. D2 is a “whole of contents” document. It was published on 23 July 2015 (which is after the priority date of the present application of 31 October 2014) however it has an earlier priority date of 15 January 2014.
Claims 1-23 and 25
104. An embodiment of the invention of D2 is shown in figure 2. This shows an intermediate layer (5.1):
105. In other embodiments of the invention of D2 show an intermediate layer and a bushing, for example figure 3:
106. However, none of the embodiments of D2 show a bushing that extends from the wheel rim to the wheel center.
107. The Opponent states in their submissions:
“Bar part of feature (d), i.e. that the insert [being shown in D2 to be a bushing] extends from the wheel rim into the wheel center, which part we assert is not an essential feature of amended claim 1, as it performs no stated function, see below, D2 discloses a wheel that has all of the features otherwise recited in claims 1, 2, 3, 8, 17-20 of the Opposed Specification, as per Table 2 following paragraphs [92] and [93] of Büter #1.
The reasons why the limitation that the bushing extends in both the wheel parts is not essential are provided by Prof. Büter at [32], [33] of Büter #2, e.g. in cases where the wheel center and wheel rim are made of the same metallic material (which is within the ambit of amended claim 1) a bushing surrounding a fixing bolt also in the center wheel part, represents a superfluous element for force transmission across the interface where the wheel parts connect to each other under inclusion of a spacer structure, such as the flared collar portion 24 of the inner bushing part 22 that is received in the wheel rim 1. As to why the collar of the inner bushing part shown in the wheel embodiments of figures 3-5 of D2 is aptly described as a 3D intermediate body, compare [44] of Büter #2.”

108. Büter #2 states at paragraph 33:
“I note that amended claim 1 does not include any wording that specifies the functionality and /or structural make-up of the bushing as put forward by Mr Renner at paragraph 25. Equally, amended claim does not mention the presence of connection elements that work together with the bushings. I note though that the description of the Application mentions these aspects in the paragraph birding pages 13 and 14. I would add here that a bushing – screw arrangement would relevantly only assist in wheel constructions where the wheel rim and wheel center components are both made from FRPs and the bolt / screw is dimensioned primarily to take tensile loads and the bushing to minimise shear loads on the bolt / screw. The presence of a bushing that extends in both wheel components to be joined by fastening bolts, where these wheel components are made from a metallic material, is strictly speaking not required unless one uses screws that cannot be tensioned to the degree necessary to clamp the parts together to generate the required frictional engagement for shear forces transfer; in such cases shear bushings can be used to transfer shear loads at the interface between the connected parts. Normally, the material selected for the screws must be ‘softer’ than that of the structures to be joined, given that under loads, deformation of the structures would reduce the clamping force. The use of high tensile steel screws with aluminium or FRP components is therefore problematic. In these cases, a suitably dimensioned bushing of suitable material can be used to take up the transverse loads (shear) and the screw only needs to be tensioned to the degree necessary to withstand the maximum loads in axial direction of the screw at the joined components.”

109. Independent claims 1, 21, 23 and 25 define that the insert is a bushing that extends from the wheel rim to the wheel center. I consider the bushing that extends from the wheel rim to the wheel center to be an essential feature of the claims. D2 does not disclose a bushing that extends from the wheel rim to the wheel center, thus these claims are considered novel in light of D2.
Claim 24
110. Claim 24 is as follows:
A wheel comprising
a. a rim and a wheel center interconnected to the rim;
b. wherein the rim comprises at least one first contact area and the wheel center comprises at least one second contact area which are in a mounted position aligned with respect to each other;
c. wherein an intermediate layer is arranged between the at least one first and the at least one second contact area preventing at least partially direct contact between the at least one first and the at least one second contact area;
d. at least one insert is arranged in the rim, said at least one insert extending from the rim into the wheel center; and,
e. the intermediate layer comprises at least one sealing bead that is arranged circumferentially at a boundary of the intermediate layer in order to prevent moisture, air, dust or other substances from entering into the interstitial space between the first and the second contact area.

111. Unlike the other independent claims, claim 24 does not define that the insert is a bushing. I consider that the insert defined in claim 24 could include within its scope a screw or bolt. Thus, D2 discloses an insert (the screw) extending from the rim to the wheel centre. D2 also discloses an intermediate layer (item 5.1).
112. D2 does not disclose a sealing bead arranged circumferentially at a boundary of the intermediate layer. Thus, D2 does not disclose all the features of claim 24. Claim 24 is novel in light of D2.
Conclusion of D2
113. Claims 1-25 are novel in light of D2.
Inventive step legal principles
114. It is a requirement of subsection 18(1) of the Act that the 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).

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

116. 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."

Inventive step in light of CGK
117. In their submissions, following a lengthy exposition, the Opponent concludes that the claims lack an inventive step in light of common general knowledge. In their submissions, the Applicant provides a lengthy rebuttal to the Opponent’s arguments.

118. Ultimately, the Opponent has concluded that since all the features of the claim are, in their view, common general knowledge, then the claims lack an inventive step. However, I consider this argument to be too reductionistic. At some level, most inventions are a combination of known features. An invention lies in identifying a non-obvious combination of (known) features in a particular way. I am not satisfied that the evidence established that the combination of features defined in the claims is obvious in light of the common general knowledge alone. Consequently, I find that claims 1-25 involve an inventive step in light of the common general knowledge alone.
Utility legal principles

Section 7A of the Patents Act 1990 (Cth) requires that the invention (so far as claimed) is useful. In Ranbaxy Australia Pty Ltd v Warner-LambertCoLLC [2008] FCAFC 82 at [141] it was stated that "the invention as claimed must attain the result promised by the patentee".

120. In Streetworx Pty Ltd v Artcraft Urban Group Pty Ltd [2014] FCA 1366 at [340], Beach J proposed a three-question test when considering utility:
i. What has the patentee promised for the invention as described in the relevant claim?
ii. Is the promise useful?
iii. Has that promise been met?

121. It was also established by the Full Federal Court in H LundbeckAJS v Alphapharm Pty Ltd [2009] FCAFC 70 that:
“A claim is bad if it covers means that will not produce the desired result, even if a skilled person would know which means to avoid. That is to say, everything that is within the scope of a claim must be useful, otherwise the claim will fail for inutility.”

122. The promise of the invention was considered in ESCO Corporation v Ronneby Road Pty Ltd [2018] FCAFC 46, with the Court noting the importance of properly construing the specification as a whole to identify the promise or promises of the invention.
Utility
123. The Opponent states in their submissions at paragraph 94 and 95:
“The aim of the invention is then stated to be:
“…to provide an improved wheel comprising a rim and a wheel center that are made as separate components and if appropriate from different materials. One aim of the invention is to provide a wheel which has an increased durability if compared to such wheels known from the prior art.” [underscoring added]

It will be noted that the ‘durability’ criteria is expressed as associated with both contact corrosion and contact mechanics at the interface where wheel rim and wheel center are in contact.”

124. The Opponent states in their submissions at paragraph 98:
“Without additional characterization of the intermediate layer as concerns properties that would allow it to mitigate one or both of the contact corrosion and contact mechanics problems existing at the interface which the intermediate layer forms with the wheel components of a hybrid, multi-part wheel, the stated claims comprise within their scope intermediate layer embodiments that do not provide for one or both of contact corrosion and mechanical fretting corrosion reduction or prevention, compare Büter #1 at [53], [66], [70] and Büter #2 at [51].”

125. The Applicant states in their submissions:
“The Opponent’s case on inutility suffers from a number of fundamental defects.

First, in effect, the Opponent seeks to have the asserted promise of the invention to be inserted into the claim. Again, this is indicative of the Opponent’s impermissible approach to construction.

Secondly, and relatedly, the Opponent’s approach disregards the fact that the specification, including the claims, must be read through the eyes of the skilled reader.

Finally, the Opponent’s assertion has no proper evidentiary basis. No experimental or other evidence is provided to support the assertions. It is nothing more than “mere speculation that the invention will not work or meet the promise set out in the specification.””

126. The description states at page 5 lines 15 to 23:
“Therefore, phenomena related to contact corrosion and contact mechanics in the area of a junction between the wheel center and adjacent rim have a major impact on the durability of a wheel. However, these problems have not been addressed in the wheels known from the prior art.

For that reason, it is one aim of the present invention to provide an improved wheel comprising a rim and a wheel center that are made as separate components and if appropriate from different materials. One aim of the invention is to provide a wheel which has an increased durability if compared to such wheels known from the prior art.”

127. I consider that the promise of the invention is a wheel composed of a connected wheel rim and wheel center with good durability. The claimed invention is a means of keeping the interfacing surfaces of the wheel rim and wheel center separated by an intermediate layer which provides good durability in wheel composed of a connected wheel center and wheel rim.

128. The Opponent’s argument is that a wheel falling within the scope of the claims could be constructed of particular materials such that it did not have good durability. The specification must be read through the eyes of a person skilled in the art. A person skilled in the art would choose an intermediate layer of a suitable material and with sufficient strength such that it would keep the interfacing surfaces of the wheel rim and wheel center separated under the load requirements of the wheel. The claimed invention meets of the promise of the invention of good durability.
Support – legal principles
129. Section 40(3) states:
The claim or claims must be clear and succinct and supported by matter disclosed in the specification.
130. In CSR Building Products Limited v United States Gypsum Company [2015] APO 72 at [115], the delegate took the following approach to determine whether the claimed matter is supported by the matter disclosed in the specification:
(a)Construe the claims to determine the scope of the invention claimed.
(b)Construe the description and the technical contribution to the art, that is how far the concept has carried forward the state of the art.
(c)Decide whether the claims are supported by the technical contribution to the art.

131. The Federal Court has approved of this approach in Cytec Industries Inc v Nalco Company (2021) FCA 970 at paragraph 146.
132. The requirement for support is intended to ensure that there is a basis in the description for each claim, and that the scope of the claims must not be broader than is justified by the extent of the description, drawings and the contribution to the art. There must also be consistency, or basis, for each claim in the description. This has been stated as meaning 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” (Generics (UK) Ltd v H Lundbeck A/S [2009] UKHL 12; [2009] RPC 13 at [97] per Lord Neuberger quoting with approval from Fuel Oils/EXXON (T409/91) [1994] OJ EPO 653).
133. The requirement of support can be summarised as the scope of the claims “should correspond to the technical contribution to the art” (Fuel Oils/EXXON (T409/91) [1994] OJ EPO 653 (Exxon) at 659).
134. In Biogen Inc v Medeva plc [1996] UKHL 18; [1997] RPC 1 at [57], Lord Hoffman referred to Asahi Kasei Kogyo KK’s Application [1991] RPC 485 to iterate that, for matter to be capable of supporting an invention, it must contain an “enabling disclosure”. That is, it must disclose the invention in a way which will enable it to be performed by a person skilled in the art. Lord Hoffmann subsequently described (at [63]) a long-established principle of patent law in the UK:
“... namely, that the specification must enable the invention to be performed to the full extent of the monopoly claimed. If the invention discloses a principle capable of general application, the claims may be in correspondingly general terms. The patentee need not show that he has proved its application in every individual instance. On the other hand, if the claims include a number of discrete methods or products, the patentee must enable the invention to be performed in respect of each of them.”

135. In Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd (Jusand) [2022] FCA 540 at 497 Rofe J approved of the approach in Biogen of determining if claims exceed the technical contribution.
Support
Benefits of the invention
136. The Opponent states in their submissions:
“The Opponent submits that at least one if not both characteristics described in the opposed Specification as essential to the invention pertain to the ability of the intermediate layer that locates between the aligned contact areas of the wheel rim and wheel center to (i) address, i.e. minimize or prevent, contact corrosion at the interface and (ii) address, i.e. minimize or prevent, load induced degradation at the interface which otherwise would adversely affect the durability of a multi-part wheel.
These two characteristics are absent from all independent claims, thus rendering these lacking in support.”

137. The specification teaches that the intermediate layer provides good durability to the wheel.

138. The claims define that the intermediate layer is a preformed three-dimensional body which is at least partially preformed to the shape of the at least one first and/or the at least one second contact area. There is no requirement that claims define the benefit of the invention.
139. I am satisfied that this aspect of the claims are supported by the description.
Claim 22 - intermediate layer comprises a continuum material
140. The Opponent states in their submissions at paragraph 110:
“Opponent also submits that as currently worded, new claim 22 is not supported in the original disclosure (as exemplified in the B2 Specification). Claim 22 stipulates that the intermediate layer comprises (i.e. includes) a layer made from a continuum material selected material including plastic, and a layer made from a non-continuum material, selected from a material including fabric. That is, the minimum number of layers is two and these have to be of different material. In contrast, the original disclosure, opposed Specification page 9 line 4 to 9 requires the multiple layers to comprise layers (plural) made from a continuum material, such as a plastic or metal, as well as layers (plural) made from a non-continuum material, such as a fabric, e.g. a fabric made from glass fibers. A subtle but notable and important difference.”

141. The description states at page 9 lines 4 to 9 (with my emphasis in bold):
“For some purposes the intermediate layer may comprise multiple layers made from different materials. As such it may comprise layers made from a continuum material, such as a plastic or metal, as well as layers made from a non-continuum material, such as a fabric, e.g. a fabric made from glass fibers. With such a multi-layered intermediate layer, efficient electrical insulation can be combined with e.g. good sealing and a more even distribution of contact stress.”

142. I have understood this paragraph to mean that one layer is a continuum material and the other layer is a non-continuum material. There is furthermore nothing to exclude the possibility that the continuum material could be a composite (e.g. a layered material) and the non-continuum material is also a composite (e.g. a layered material). I am not satisfied that this aspect of the claim lacks support.
Connection element and insert
143. The Opponent states in their submissions:
“Furthermore, none of the independent claims 1, 21, 23 and 25 specify any characteristic of the bushing insert which extends from the wheel rim into the wheel center, which, by itself and not in combination with a connection element such as a screw or bolt joining the wheel parts, prevents or reduces mechanical loading of the wheel leading to a degradation of the load carrying and transfer capabilities at the interface between the wheel center and its surrounding wheel rim, compare Büter #1 at [67].”

144. The description states at page 13 line 19 to page 14 line 4:
“Good wheel performance with respect to load transfer and durability may be obtained if at least one insert is arranged in the rim, said at least one insert extending from the rim into the wheel center. Such an insert may be advantageous in order to improve load transfer between a wheel center and a rim. For example, the insert may be a bushing. Such a bushing may surround a screw which is acting as a connection element. Thus, a connecting screw can be protected from critical bending moments as well as shearing.”

145. Büter#1 states at paragraph 67:
“The loading issues may be addressed by an "insert" in claim 1 arranged in the rim of the wheel and extending into the wheel center, for example, to support a bolt connecting the rim and the wheel center. However, claim 1 also does not describe any specific function for the insert. Additionally, for the reasons I mentioned in paragraph 61 above, in my opinion, the way the word "insert" is used in the Patent is general enough to include something that does not necessarily alleviate loading issues, for example, a bolt that is not supported by an(other) insert.”

146. Renner#1 states at paragraphs 24 and 25:
“I understand that independent claims 1, 21, 23, 25 of the application all relate to a wheel comprising an insert in form of a bushing extending from the rim into the wheel center. Document D2 (WO2015106760 A1) does not show such a bushing. The bushing of D2 is arranged in the rim but does not extend in the wheel center. Document D3 (WO2015090275 A1) only discloses an attachment element without a bushing, Document D4 (WO2007146260 A2) and document D5 (JP2004345490 A) rivets without bushings, and Document D6 (FR1114895) relates to fastening bolts, again without bushings.
Hence, none of these connection techniques are able to protect the (main) connection element (screw, bolt, rivet or others) from loads like shear or bending moments. This results in higher deformation and stresses in the connection element. Furthermore, the distribution of forces with such a bushing extending into the wheel center prevents micro movements and thus further reduces the risk of corrosion and leakage of air into the interior of the tyre. The risk of failure in the connection element is reduced and its durability increased.”

147. The Applicant states in their submissions:
“As noted in respect of enablement, there is no requirement that a claim to an apparatus has to specify each and every component of that apparatus, particularly where it is apparent that the skilled reader would understand it to be present. The description of the preferred embodiments, particularly in relation to figures 5 and 7-9, makes it clear that the bushing is arranged on a fastener such as a screw.”

148. The claims define that the “wheel center [is] interconnected to the rim”. The specification provides ample support for means for interconnecting the wheel center to the rim. Furthermore, the specific means for interconnecting the wheel center to the rim does not appear to be the technical contribution to the art. Although the claims define a bushing which suggests that a screw (or similar connection element) would be suitable means for performing the interconnection, I do not consider the absence of the connection element in the claims leads to any serious inconsistency. I consider this aspect of the claims to be supported by the specification.
Clear enough and complete enough disclosure
Clear enough and complete enough disclosure - legal principles
149. Subsection 40(2)(a) of the Act requires that a complete specification disclose the invention in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art.
150. In CSR Building Products Limited v United States Gypsum Company [2015] APO 72 the delegate adopted a three-step test for determining whether the specification provided a clear enough and complete enough disclosure of the claimed invention as follows:

What is the scope of the invention as claimed?

What does the specification disclose to the skilled person?

Does the specification provide an enabling disclosure of all the things that fall within the scope of the claims?

151. An expanded approach was taken in Evolva SA [2017] APO 57 The third consideration of enablement set out in CSR was assessed according to the following criteria:

Is it plausible that the invention can be worked across the full scope of the invention?

Can the invention be performed across the full scope of the claims without undue burden?

152. In general, the extent of the disclosure necessary to make the patent sufficient will depend upon the nature of the invention, the scope of the claims and the art in which the invention is made.
Clear enough and complete enough disclosure
153. The Opponent states in their submissions at paragraphs 117 to 121:
“Relevantly, Prof. Büter at Büter #1 [61], [62] and [67] notes that a bushing by and of itself is not by inherent definition a load bearing constructional element, and only where the bushing pairs with a screw (or bolt) received therein, it provides a load transmission arrangement with the bolt in which load carriage is subdivided, i.e. the bushing serves primarily to transfer (or take-up) shear forces and the screw forces aligned with the axis of the screw, compare also Büter #2 at [33], and such connection arrangements are well known, Büter #2 at [36].
The opposed Specification does not provide any other embodiments of a bushing which could perform a load carrying function aimed at improving fretting corrosion between the wheel rim and wheel center interface at which the bushing is received.
Put in the context of subsection 40(2)(a), the opposed Specification only enables the PSA to provide a bushing embodiment which is juxtaposed with a screw, as described in the paragraph spanning pages 13 and 14, and page 20, line 7 to 19 and page 21 line 4 to 10 (where the specific embodiment of how to join the wheel rim to the wheel center using screws and associated collared bushings is described with reference to the figures of the opposed Specification), but not others.
That is, the Opponent submits that illustration of a sole, specific embodiment of a bushing cooperating with a fastener is insufficient in providing an enabling disclosure of all the things that fall within the scope of the term ‘bushing’ as used in the claims referencing it.”

154. The fact that the claims do not define the connection means that interconnects the wheel center to the rim has been addressed above in the support section of the decision. The bushing in the present invention is well understood by both the experts (Renner and Büter). Bushing is used to protect the screw from “critical bending moments as well as shearing”. I consider that there is sufficient information in the specification about the bushing which would allow a person skilled in the art to perform the invention.
Conclusion
155. Claims 1-3, 10-15, 17, 18 and 19 lack novelty in light of D1 (WO 2016/037611).
156. The claims can be amended such that they overcome this deficiency. I will provide the applicant a period of two months from the date of this decision to propose amendments to overcome the identified deficiencies.
Costs
157. It is normal in matters before the Commissioner that costs should follow the event. I see no reason to depart from that approach in the present case. I will award costs according to Schedule 8 against the Applicant, Mubea Carbo Tech GmbH.
Xavier Gisz
Delegate of the Commissioner of Patents