Action Composites Hightech GmbH v Mubea Carbo Tech GmbH - [2022] APO 61

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Action Composites Hightech GmbH v Mubea Carbo Tech GmbH [2022] APO 61
Patent Application: 2015367411

Title:Heat shield structure for a wheel

Patent Applicant: Mubea Carbo Tech GmbH

Opponent:Action Composites Hightech GmbH

Delegate:Xavier Gisz

Decision Date: 2 September 2022

Hearing Date: 2 June 2022, in Video Conference

Catchwords: PATENTS - section 59 – opposition to the grant of a patent – grounds of novelty, inventive step, utility, clarity, support, sufficient disclosure – claims 1 and 6-11 lack novelty and an inventive step – 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

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2015367411

Title:Heat shield structure for a wheel

Patent Applicant: Mubea Carbo Tech GmbH
Date of Decision: 2 September 2022
DECISION

Claims 1 and 6-11 lack novelty and an inventive step in light of US 5,277,479. Claims 8 and 10 lack novelty and an inventive step in light of EP 2 743 095.
These deficiencies can be overcome by amendment. I allow the Applicant 2 months from the date of this decision to propose suitable amendments to overcome the adverse findings in this decision.
Costs awarded against the Applicant, Mubea Carbo Tech GmbH.
REASONS FOR DECISION

Background

Patent application 2015367411 (the Application) in the name of Mubea Carbo Tech GmbH (the Applicant) is a national phase entry of PCT/EP2015/080245 (publication number WO 2016/097159) with a priority date of 19 December 2014 and filing date of 17 December 2015.
The Application was accepted on 4 July 2019. A notice of opposition was filed on 18 October 2019 by ThyssenKrupp Carbon Components GmbH. The right and interest in the opposition were transferred to Action Composites Hightech GmbH (the Opponent) on 16 November 2021. A Statement of Grounds and Particulars was filed on 17 January 2020. Evidence in Support was filed on 15 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 5 June 2020.
On 25 September 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 December 2020 and advertised for opposition on 14 January 2021. The Commissioner informed the parties that the amendments were allowed on 23 March 2021.
The Evidence in Answer was filed on 6 April 2021. The Evidence in Reply was filed on 9 June 2021.
On 7 July 2021 the Opponent requested to amend the Statement of Grounds and Particulars (SGP). The amendment to the SGP was allowed on 27 July 2021.
On 7 July 2021 the Applicant stated an intention to challenge whether the Evidence in Reply was properly in reply. The Applicant also stated an intention to file information for the Commissioner to consider under regulation 5.23 as part of the challenge to the Evidence in Reply.
On 20 July 2021 the Applicant informed the Commissioner that they would file the regulation 5.23 information within 2 months.
On 20 September 2021 the Applicant filed a declaration by Christoph Renner to be considered under regulation 5.23.
Following a series of letters between the parties and the Delegate, the Delegate ultimately made the following direction (on 23 December 2021):
1. That paragraphs [73] and [74] (and the figure referred to therein) of the second declaration by Professor Andreas Büter, dated 4 June 2021, are not properly in reply to the evidence in answer and do not form part of the evidence.
2. That the Commissioner will consider paragraphs [73] and [74] (and the figure referred to therein) of the second declaration by Professor Andreas Büter, dated 4 June 2021 in deciding the opposition pursuant to Reg 5.23, with paragraph [13] of the declaration of Mr Christoph Renner being responding evidence for the purposes of Reg 5.23(2)(c).
3. Nothing in these directions prevents either party from making further submissions about any of the Reg 5.23 material the subject to direction no 2 above, either in written submissions or at the hearing.
Regulation 5.23
At the hearing the parties proposed that the entirety of the Büter declaration dated 4 June 2021 and the Renner declaration dated 16 September 2021 should be considered as evidence in the opposition (without conceding their positions on whether paragraphs [73] and [74] of the Büter declaration was properly in reply). However, parties being in agreement on what should be considered evidence does not override the Commissioner’s prerogative.
In Merial Limited v Bayer Intellectual Property GmbH [2015] APO 16 at paragraph 24 the delegate provided the following summary of the type of information that should be considered under reg 5.23:
“I conclude that a decision under regulation 5.23 must have regard to the nature of the information and whether the information is likely, if not certain, to change the outcome of the opposition in a significant way.”
I agree with the conclusion provided in Delegate’s letter of 23 December 2021 regarding the reg 5.23 information; I am not satisfied that the information excluded by the Delegate rises to the level of “likely, if not certain, to change the outcome of the opposition in a significant way”. Following the Delegate’s direction quoted above, paragraphs [73] and [74] (and the figure referred to therein) of the Büter declaration are not properly in reply but will be considered under regulation 5.23. Paragraph [13] of the Renner declaration is responding evidence for the purposes of Reg 5.23(2)(c). The remainder of the Renner declaration will not be relied upon under regulation 5.23.
The grounds of opposition
The grounds of opposition in the Statement of Grounds and Particulars are: novelty, inventive step, utility, clarity, support, and sufficient disclosure.
In the written submissions the opponent pressed the grounds of: inventive step, utility, clarity, support, and sufficient disclosure.
The Opponent states in their written submissions at paragraph 115:
“In the present opposition, the Opponent will not press the lack of novelty ground put forward in the SOGAP. This is done without prejudice to raising such in separate proceedings or should an appeal ensue once the Opposition is determined by the Commissioner of Patents.”
During the hearing the Opponent included novelty in their oral submissions.
The Evidence
Evidence in Support
Evidence in Support comprises a declaration of Andreas Büter made 15 April 2020 together with Annexure AB-1 to AB-6 (Büter #1).
Evidence in Answer
Evidence in Answer comprises a declaration of Christoph Renner made 31 March 2021 together with Annexure CR-1 to CR-3 (Renner #1).
Evidence in Reply
Evidence in Reply comprises a declaration of Andreas Büter dated 4 June 2021 (excluding paragraphs 73 and 74 and the figure referred to therein) together with Annexure AB-7 to AB-10 (Büter #2).
Regulation 5.23 information
As discussed above, the following information will be considered under reg 5.23:
·paragraphs 73 and 74 and the figure referred to therein of the declaration of Andreas Büter dated 4 June 2021.
·Paragraph 13 of the Renner declaration dated 16 September 2021.
The relevant legislation
The present application was filed on 17 December 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 invention is a heat shield for a wheel. The specification states in the background section:
“When braking, kinetic energy of a vehicle is converted into thermal energy, resulting in high temperatures generated by the brake system. In disk brake systems, particularly in carbon-ceramic brakes which are widely used for motor vehicles, operating temperatures up to 1 000 °C may occur. While driving, such high temperatures are not critical since both the brake systems and the adjacent wheels are efficiently cooled by the air flowing around the vehicle, respectively around and through the wheels and the brake systems.
However, if a vehicle is braked from high speed and immediately afterwards parked, such active air cooling is missing. Consequently during up to 30 minutes after braking, a significant heat transfer from the hot brake systems to the wheels may occur. Because brake systems are usually not in direct physical contact with the adjacent wheel, this transfer mainly takes place through radiation and convection, while conduction can almost be neglected. As for disk brakes, the distance between the wheel and the brake caliper as well as the brake disk is usually very low and therefore heat transfer by radiation and convection in this area may be very high. Whereas for conventional wheels made from metals such heat transfers is not high enough to induce thermal damage to the wheels, it may become critical for wheels made from other materials, such as fiber reinforced plastics.”
An embodiment of the invention where the heat shield most clearly visible is shown in figures 4 and 5:
The corresponding description states at page 10 line 17 to page 11 line 2:
“Therefore, according to the present invention, these regions of the wheel 1 may be provided by heat shield structures, as shown in Figures 4 and 5. Figure 4 shows a wheel center 2 which is thermally shielded by a heat shield structure 8 that is positioned on the wheel's surface that is in critical proximity to the disk brake system (not shown). In the embodiment shown, the region adjacent to the hub 4 as well as parts of the spokes 3, may be protected by such a heat shield structure 8. As shown in Figure 5, also the inner (centripetal) surface of the rim 5 may be thermally shielded by such heat shield structures 8.”
Claims
The claim set as amended on 25 September 2020 contains 12 claims; 4 independent claims and 8 dependent claims:
1.A wheel for a motor vehicle or an aircraft comprising a base structure that is at least partially made from a composite material and a heat shield structure, wherein
a)the heat shield structure is arranged on the base structure, is at least partially covering the base structure and is at least partially embedded in the base structure, and wherein
b)the heat shield structure comprises at least one high thermal conductive layer comprising a mesh and wherein
c)the high thermal conductive layer also serves as a load bearing structure for the heat shield structure and/or a subjacent structure.
2.The wheel according to claim 1, wherein, the heat shield structure comprises at least one heat reflecting layer.
3.The wheel according to claim 2, wherein the at least one heat reflecting layer is made from a metal or a ceramic material.
4.The wheel according to any one of the preceding claims, wherein the heat shield structure comprises at least one low thermal conductive layer.
5.The wheel according to claim 4, wherein the at least one low thermal conductive layer is made from a continuum plastic and/or a porous plastic and/or a fiber reinforced plastic and/or a continuum ceramic material and/or a fiber reinforced ceramic material and/or a porous ceramic material.
6.The wheel according to any one of the preceding claims, wherein the at least one high thermal conductive layer is made from a metal sheet and/or a metal foil and/or a metal mesh and/or a metal fabric.
7.The wheel according to any one of the preceding claims, wherein the heat shield structure is arranged in the hub region and/or on the other parts of the wheel center and/or on the rim.
8.A wheel comprising a base structure that is at least partially made from a composite material and a heat shield structure, wherein
a)an inner centripetal surface of a rim of the wheel is thermally shielded by the heat shield structure and
b)the heat shield structure is arranged on the base structure, is at least partially covering the base structure and is at least partially embedded in the base structure, and wherein
c)the heat shield structure comprises at least one high thermal conductive layer comprising a mesh.
9.The wheel according to claim 8, wherein the wheel is used for a motor vehicle or an aircraft.
10.The wheel according to claim 8 or 9, wherein the high thermal conductive layer also serves as a load bearing structure for the heat shield structure and/or a subjacent structure.
11.A wheel for a motor vehicle or an aircraft comprising a base structure that is at least partially made from a composite material and a heat shield structure, wherein
a)the heat shield structure comprises at least one high thermal conductive layer comprising a mesh and wherein
b)the heat shield structure is arranged on the base structure, and is at least partially covering the base structure and is at least partially embedded in the base structure, such that
c)the heat shield structure is an integral part of the wheel allowing a controlled dissipation of thermal energy using the structure of the wheel.
12.System of a wheel with a disk brake system comprising a brake disk which is aligned with a caliper, wherein
a)the wheel is made of fiber reinforced plastic comprising a wheel center with several spokes that connect a central hub with a peripheral rim, which is designed in order to receive a tire,
b)the wheel comprises a base structure that is at least partially made from a composite material and wherein
c)a heat shield structure is arranged between the brake disk and the spokes; the brake disk and the hub; the brake disk and the rim, as well as between the caliper and the spokes, and the caliper and the rim,
d)the heat shield structure is arranged on the base structure, is at least partially covering the base structure and is at least partially embedded in the base structure, and wherein
e)the heat shield structure comprises at least one high thermal conductive layer comprising a mesh.
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”
Clarity Principles
It is a requirement of subsection 40(3) of the Act that the claims must be clear. This requirement is understood to be satisfied if a person could ascertain "whether or not what he proposes to do falls within the ambit of the claim" (Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59). Therefore if a construction of the claims where the monopoly is defined cannot be determined, then the claims must fail for want of clarity. However, the lack of a precise definition in claims may not be fatal to validity so long as they provide a workable standard suitable to the intended use (Minnesota Mining and Manufacturing Co. v Beiersdorf (Australia) Ltd. [1980] HCA 9; (1980) 144 CLR 253 at 46).
Construction and Clarity
Heat shield structure
From my understanding of the specification there are three methods of shielding from heat:
·thermal insulator
·heat reflector
·thermal conductor
The disclosed invention includes a combination of heat shielding types. In the specification, the heat shielding types are layered onto the base. Thus, a single heat shield can be a layering of different heat shielding types. This is layering of different heat shielding is described at page 6 lines 10 to 15:
“Good results may be obtained if a high thermal conductive layer is arranged between a heat reflecting layer and a low thermal conductive layer - the heat reflecting layer being on an outer face of a wheel. Such intermediate layers may be used in order to disperse locally applied thermal energy very efficiently over a larger area and hence to avoid local accumulation of heat which may lead to damage of the subjacent structure.”
The independent claims define that the heat shield contains a high thermal conductor. The dependent claims define other features such as the heat shield also containing a thermal insulator and a heat reflector.
High thermal conductivity
The independent claims define that the heat shield structure comprises at least one high thermal conductive layer.
The Opponent states in their submissions at paragraph 78:
“As concerns the relative term ‘high thermal conductive layer’, no reference values for actual thermal conductivity are provided in the Specification for the materials that may form part of such highly conductive layer. Whilst Prof. Büter at [90] of Büter #1 notes his understanding of the functionality which such layer is to perform, namely ‘The purpose of a layer of high thermally conductive material would be to conduct/distribute heat through the wheel, thus avoiding hotspots and assisting in cooling of the wheel’, yet in Büter #2 at [67] he equally notes that ‘claim 1 as amended (and the other claims) does not specify the amount of heat which the ‘high thermal conductive layer’ is to carry nor any mesh densities required for a mesh (of whatever make-up) to carry a desired heat load. Simply specifying the heat shield structure to have a high thermal conductive layer says nothing to me as there is no reference level that allows me to identify what is regarded as low, medium or high thermal conductance.’”
The Applicant states in their submissions at paragraphs 59 and 60:
“As the Opponent notes, Professor Büter’s understands this term as follows ‘The purpose of a layer of high thermally conductive material would be to conduct/distribute heat through the wheel, thus avoiding hotspots and assisting in cooling of the wheel’.
The Opponent’s construction submissions relating to this term appear to rely on the proposition that the Opposed Application does not teach specific values or levels of thermal conductivity. That submission is dealt with in relation to clarity.”
The Applicant states at paragraphs 223 to 225:
“The Opponent’s contention that the claims are unclear because they fail to identify specific values or levels of thermal conductivity should also be rejected for the following reasons.
First, as noted above, it is permissible to use an imprecise word in a claim where, in an appropriate context, it conveys the necessary meaning. A patentee does not have to express his claim with a precision that implies an arbitrary restriction on the inherent variability of a feature which is part of the invention.
Secondly, there is no evidence to suggest that the Opposed Application does not provide a workable standard for the skilled addressee to work the invention.”
The term ‘high’ is a relative term. The specification states at page 6 lines 17 to 20:
“A high thermal conductive layer may e.g. comprise a metal sheet, metal foil, a metal mesh (grid) or a metal fabric. Alternatively or in addition also sheets, foils, meshes/grids and fabrics made from other materials. Good results may be obtained if materials with a relatively high thermal conductivity are used.”

Thus, the specification provides that metals in general have a high thermal conductivity.
Of course, a metal can only act as a thermal conduction heat shield if its thermal conductivity is greater than the object it is applied to. So the term ‘high’ must be further understood in comparison to the thermal conductivity of the object being shielded. I consider the use of the term ‘high’ (when understood in the context of the specification) to be clear.
Mesh
The Opponent states in their submissions at paragraph 81:
“Claim 1 further states that the at least one high thermal conductive layer comprises a ‘mesh’, feature (1.5). We submit that in absence of any characterization or exemplification in the Specification of what such structure encompasses, and the limited comments made by Prof. Büter and Renner as to their understanding of this term, the ordinary meaning would seem apposite: A mesh is a knitted structure of fibers (of whatever suitable materials) and is technically a barrier created from connected strands. The yarns / fibers are knitted or woven together, resulting in a fabric with open spaces in between the strands of yarn. Büter at [72] in Büter #1 seems to equate ‘mesh’ with ‘net’, which supports the proposed ordinary meaning put forward.”
The Applicant states in their submissions at paragraph 61:
“The Applicant submits that the term ‘mesh’ should be given its ‘ordinary’ meaning.”
I agree with both parties that the term ‘mesh’ should be understood by its ordinary meaning. That is, a structure formed of fibres that are knitted or woven together.
Composite
In relation to the construction of the term ‘composite’ the Opponent states in their submissions at paragraph 66:
“As concerns the base structure being at least partially made from a ‘composite material’, we note that the term ‘composite material’ is not defined in the Specification. The Specification references FRPs and in particular CFRPs as representatives of what such term encompasses, but it appears clear that is not so limited. The Specification notes at page 8 lines 4 to 7 that ‘the present invention is not only limited to wheels made from carbon fibers reinforced plastics but may also be used for wheels made from other materials that suffer from similar problems regarding heat resistance’ [underscoring added]. However, no exemplifications of other composite materials are provided. The problems regarding heat resistance of FRPs, and CFRPs in particular, are stated to reside in the matrix material of such structures, Specification page 2 lines 4-6; page 2 lines 8 to 11; page 3, line 9 to 11; and relevantly page 4 line 1 to 10. It may be assumed that the term ‘composite material’ may then stand for composites comprising a resin matrix in which fibers or other solids are embedded, the resin being responsible for the heat resistance problems.”
The Applicant states in their submissions at paragraphs 54 to 56:
“The Opponent suggests that the term ‘composite material’ should be construed as ‘composites comprising a resin matrix in which fibers or other solids are embedded, the resin being responsible for the heat resistance problems.’
There is no proper basis to import these various limitations into the term – ‘composite materials’. As noted in relation to support, Professor Büter’s understanding of this term is that: A "composite material" is generally understood to mean a material made of a combination of different materials”. That is the meaning that should be given to this term. It is submitted that the Opponent’s construction of this term does not reflect the common-sense, purposive approach required by the authorities.
The Applicant agrees with the Opponent that it would be impermissible to restrict the broad ambit of the term ‘composite material’ to CFRPs or FRPs. As the Opponent notes “Whilst it may be the case that most composite wheels are manufactured from FRP composite materials, there is nothing in the Evidence that indicates this to be invariably the case.””
I consider that a composite is merely two or more different materials combined in such a way that the two materials can be distinguished. So, for example, an alloy of two metals is not a composite because the metals are mixed to the extent that the two metals cannot be distinguished once in alloy form.
Load bearing structure
The Opponent states in their submissions at paragraphs 89 and 90:
“Claim 1 does not recite that the high thermal conductive layer is devised as a mechanically reinforcing element of the heat shield structure and/or for the subjacent base structure which the PSA would then able to identify as serving as a load bearing structure. The expression ‘serving as a load bearing structure’ by and of itself is not clear. In and of itself it only denotes a ‘desiderata’ to be achieved, but not the actual structural means for how to do it.
Noting that this feature was added to claim 1 after Büter #1 had been filed as EIS, it is trite to note that it is only in Büter #2 where Prof. Büter comments on his understanding of the feature, compare paragraphs [54], [55] and relevantly [63]. Prof. Büter notes: ‘I am not entirely clear what the newly added feature [1.6] of amended claim 1 is intended to define… The heat shield structure must by definition have some ‘load bearing’ capability, in my view. Even a thin reflective and/or heat conducting plating applied to an inner surface of the rim barrel of a wheel must be ‘load bearing’ to some extent. What type of load is to be carried is not defined in amended claim 1. That is, noting that the ‘high thermal conductive layer’ comprises a ‘mesh’, I assume the mesh must have some degree of rigidity. I take it therefore that the layer must have some inherent rigidity.’”
The Applicant states in their submissions at paragraph 67:
“As a matter of construction, the Applicant submits that “load bearing structure” be given its ordinary meaning of a structure capable of bearing a load.”
I agree with the Applicant that the load bearing structure is self-explanatory – it defines a structure capable of bearing a load. However, I also agree with the Opponent: the extent of the load is not defined, so provides only a minimal limitation on the claim, and only excludes an extremely fragile structure that cannot bear any significant load.
The Opponent states in their submissions at paragraph 91:
“Having noted this understanding, Prof. Büter’s comments clearly suggest that in order to ascribe a meaning to the feature “the high thermal conductive layer also serves as a load bearing structure for the heat shield structure and/or a subjacent structure’, there is a need to ‘mentally supplement’ feature (1.6) by characterizing the recited mesh [or another not specifically mentioned component of the at least one high thermal conductive layer] as performing the load bearing function. However, claim 1 does not recite that it is the mesh which provides the load bearing structure, rather the high thermal conductive layer itself serves the purpose.”
I consider that the high thermal conductive layer defined in the claims is inherently a non-fragile element and thus is load bearing structure. The load bearing structure is for the heat shield structure and/or a subjacent structure’, but this does not appear to provide any additional limitation on the claim.
Embedded
The claims require that the heat shield is at least partially embedded in the base. The wording ‘at least partially’ can alternatively be understood as either partially or completely.
“at least partially covering the base structure and is at least partially embedded in the base structure”
I initially understood that the phrase “at least partially covering the base structure and is at least partially embedded in the base structure” meant that the heat shield must have two separate features. One element covering an exterior surface of the base, while another element embedded within the base.
In the hearing, I identified figure 8 of the drawings to demonstrate the geometry of my understanding of these two separate features.
I acknowledged that figure 8 did not actually disclose an embodiment which fell within the scope of the claims since element 9 is described as a heat reflecting layer, and not a high thermal conductive mesh.
I asked the Opponent if my geometric understanding was also their construction of this phrase. The Opponent agreed that that is how they understood and construed the claim.
I then asked the Applicant if that was their construction of this phrase. The Applicant disagreed. The Applicant was of the view that a heat shield layer that was embedded in the base would also be covering the base. The Applicant said the geometry shown in embodiments to figures 7 to 11 (reproduced below) fell within the scope of the phrase: “at least partially covering the base structure and is at least partially embedded in the base structure”:
The Applicant submitted that the geometry of embodiment shown in figure 6 does not fall in the scope of this feature, since the element 9 is on top of, and not partially embedded in, the base.
The Applicant’s preferred construction of the phrase “at least partially covering the base structure and is at least partially embedded in the base structure” appears, at first glance, to be somewhat redundant: If the heat shield structure is partially embedded in the base structure, then it is also necessarily partially covering the base structure. However, there actually is no redundancy in this phrase; it excludes the scenario where the heat shield structure extends all the way through the base and is thus not partially covering the base structure.
I thus construe the phrase “at least partially covering the base structure and is at least partially embedded in the base structure” to exclude the heat shield structure completely extending through the base.
I note that construing the claims in this way results in claims with relatively broad scope. To put simply, the broadest claim defines a composite wheel with a partially embedded thermally conductive mesh.
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) 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) 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) 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]; (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 (Justice Bennett in Danisco (No 2) [2011] FCA 282 at [248]; (2011) 91 IPR 209 at [248]).
Novelty
D1 (US 5,277,479)
Although the ground of novelty was raised in the Statement of Grounds and Particulars, the ground of novelty was not pursued in their written submissions.
During the hearing, I expressed the view that, given the Applicant’s construction of the independent claims, D1 did appear prima facie to disclose all the features of D1. The Opponent agreed that, if that construction were adopted, then D1 did indeed appear to disclose all the features of the independent claims and thus the Opponent pressed the ground of novelty in their oral submissions.
D1 discloses a resin wheel. The resin is mixed with reinforcing fibers (column 4 lines 37 to 68). Thus D1 discloses a composite wheel base structure.
D1 discloses at column 6 lines 48 to 62 (with my emphasis in bold):
“For example, as shown in FIG. 5, a certain kind of a reinforcing layer, specifically, a layer containing an increased blending amount of the reinforcing fibers, or a reinforcing member may be disposed as the reinforcing structure at the intermediate portions 18 of the entire wheel 17. The reinforcing layer may be disposed also to the surfaces 19.
In this case, a material used for the reinforcing layer can include, for example, glass, carbon, graphite, aramide, ceramic (SiC, Al2O3 or the like) and metal (boron or stainless steel). As the form of the reinforcement, one directional long fiber such as roving, cloth, braid, twisted wire, net, linear or plate-like product prepared by arranging them and solidifying with a resin (FRP), as well as three-dimensional fabrics are most suitable.”
Figure 5 of D1 is shown below:
The Applicant disagreed that D1 had all the features defined in the independent claims for the following reasons:
·They disagreed that a net was a mesh
·They disagreed that stainless steel was highly thermal conductive
·They disagreed that the metal net would act as a heat shield
·They argued that the net was applied as a layer onto the surface of the base, rather than being embedded into the base.
·They argued that there was no clear and unmistakeable disclosure of a metal mesh.
Net
The Macquarie Dictionary relevantly defines a net as:
1. a lacelike fabric with a uniform mesh of cotton, silk, rayon, nylon, or other fibre, often forming the foundation of many kinds of lace.
2.a piece of meshed fabric for any purpose: a mosquito net.
I consider a net to be synonymous with a mesh.
Are stainless steel and boron highly thermally conductive?
I have construed the term high thermal conductivity to include any metal (with the caveat that its conductivity is greater than the object which it is shielding). Stainless steel and boron are both metals so fall within the scope of the term ‘highly thermally conductive’.
Would a stainless steel or boron net act as a heat shield?
I consider that it would also have heat shielding characteristics since the thermal conductivity of metal is significantly greater than the resin (FRP) base (see Büter#1 at paragraph 116)
D1 provides no details about the mesh aperture size or thickness. However, I consider that any metal mesh would have some (even if small) heat shielding characteristics. I further note that the present application provides no detail about the mesh (e.g., aperture size or thickness).
Is the mesh partially covering and partially embedded into the base?
D1 discloses the net is solidified in a resin on the surface of the composite wheel. The wheel itself is also made of a resin. I consider that this falls within the scope of the net being embedded in the base.
Is this a clear and unmistakable disclosure?
The Applicant argued that the number of combinations of materials and forms lead to the particular combination of net (mesh) made of metal (boron or stainless steel) being just one possibility, rather than a clear and unmistakable disclosure.
I agree that some combinations listed may not be a clear and unmistakable disclosure because certain materials in certain forms are not well known (for example a ceramic in a braided form) and thus there would be some uncertainty what is actually disclosed for these unusual combinations. However, I consider making a mesh with stainless steel would be considered well known and immediately apparent to a person skilled in the art.
Novelty of independent claims in light of D1
Claim 1
D1 discloses the features of the independent claim 1.
Claim 8
Claim 8 does not have two limitations of claim 1: The wheel is not limited to being suitable for motor vehicles or aircraft, and the heat shield is not limited to being load bearing. Claim 8 has the limitation over claim 1: the heat shield is located on the inner centripetal surface of a rim.
D1 discloses the surface (19) of the wheel to be covered with the reinforcing layer. The surface is shown in figure 5 to be the external surface of the wheel:
The external surface includes the inner (centripetal) surface of the rim of the wheel. Consequently, D1 discloses all the features of claim 8.
Claim 11
Claim 11 does not have the limitation of claim 1 that the heat shield is load bearing. Claim 11 has the limitation over claim 1 “the heat shield structure is an integral part of the wheel allowing a controlled dissipation of thermal energy using the structure of the wheel.”
I have found above that D1 discloses the net is solidified in a resin on the surface of the composite wheel. The wheel itself is also made of a resin. I consider that D1 discloses that the heat shield is an integral part of the wheel and allows for “controlled dissipation of thermal energy using the structure of the wheel”. Consequently, D1 discloses all the features of claim 11.
Claim 12
Claim 12 has the limitation over claim 1 that the location of the heat shield is define with respect to the components of the brake system. Claim 12 also has the limitation that the wheel is made of fiber reinforced plastic comprising a wheel center with several spokes that connect a central hub with a peripheral rim, which is designed in order to receive a tire.
D1 states at column 4 lines 1 to 3:
“Referring to FIGS. 1 to 5 of the present invention, for instance, a wheel is usually attached by way of hub bolts to a disk adjacent to a brake drum or brake disk.”
Because the embodiment shown in figure 5 heat shield covers the entire surface of the wheel, I am satisfied that the heat shield is arranged between the brake and the wheel as defined in item c) of claim 12.
D1 is made from fiber reinforced plastic. D1 states at column 3 line 61:
“None of the resin wheels has decorative holes.”
This is in contrast the decorative holes are shown in prior art wheel shown in figure 7:
Spokes are formed by the areas between the decorative holes. D1 does not disclose decorative holes and thus does not disclose spokes.
Consequently, D1 does not disclose all the features of claim 12.
Dependent claims
Claims 2 and 3
Claim 2: The wheel according to claim 1, wherein, the heat shield structure comprises at least one heat reflecting layer.
Claim 3: The wheel according to claim 2, wherein the at least one heat reflecting layer is made from a metal or a ceramic material.
D1 does not disclose a heat reflecting layer. Claims 2 and 3 are novel in light of D1.
Claims 4 and 5
Claim 4: The wheel according to any one of the preceding claims, wherein the heat shield structure comprises at least one low thermal conductive layer.
Claim 5: The wheel according to claim 4, wherein the at least one low thermal conductive layer is made from a continuum plastic and/or a porous plastic and/or a fiber reinforced plastic and/or a continuum ceramic material and/or a fiber reinforced ceramic material and/or a porous ceramic material.
D1 does not disclose a low thermal conductive layer in the same embodiment as the high thermal conductivity layer comprising a mesh. I am not satisfied that the two different embodiments can be read as a single disclosure of this combination of features. Claims 4 and 5 are novel in light of D1.
Claim 6

Claim 6: The wheel according to any one of the preceding claims, wherein the at least one high thermal conductive layer is made from a metal sheet and/or a metal foil and/or a metal mesh and/or a metal fabric.
D1 discloses the high thermal conductive layer to be made of metal mesh as discussed in relation to the above. Since one of the optional features defined in the claim is the high thermal conduction layer being ‘metal mesh’, this claim lacks novelty in light of D1.
Claim 7
Claim 7: The wheel according to any one of the preceding claims, wherein the heat shield structure is arranged in the hub region and/or on the other parts of the wheel center and/or on the rim.
D1 disclose the heat shield on the surface of the hub and the rim in figure 4. Claim 7 lacks novelty in light of D1.
Claim 9

100. Claim 9: The wheel according to claim 8, wherein the wheel is used for a motor vehicle or an aircraft.
101. D1 discloses a motor vehicle wheel. Claim 9 lacks novelty in light of D1.
Claim 10
102. Claim 10: The wheel according to claim 8 or 9, wherein the high thermal conductive layer also serves as a load bearing structure for the heat shield structure and/or a subjacent structure.
103. D1 discloses a reinforcement mesh. This is considered a load bearing structure. Claim 10 lacks novelty in light of D1.
Conclusion on novelty of claims in light of D1
104. D1 discloses the features defined in claims 1 and 6-11.
D2 (EP 2 743 095)
105. D2 discloses a bicycle wheel with a heat conduction layer in the rim to prevent distortion due to frictional heating. One embodiment of D2 with the heat conduction layer on the sides of the rim is shown in figure 5:

106. Another embodiment is shown in figure 4 with the heat conduction layer on the exterior surface of the rim (that will not be covered by the tire) extending from one side via the inner (centripetal) surface to the other side:

107. D2 discloses the heat conduction layer to be a mesh structure at paragraph 18:
“In one embodiment, the heat conduction material can be porous or has mesh structure. For example, it is a metal grid. When thermally molding, resin in the carbon fiber composites of the circular rim 11 is melting with fluidity when heating. Thus, meshes of the metal grid are filled with fluid resin to combine the circular rim 11 and the heat conduction layers 12 together. According to the manufacturing method described above, it not only simplifies the manufacturing process but also obtain greater combination strength of the circular rim 11 and the heat conduction layers 12. Similarly, the heat insulation layer 13 can be integrated together by thermally molding. Resin in the carbon fiber composites of the inorganic fiber composites of the heat insulation layer 13 is melting with fluidity when heating. Thus, meshes of the metal grid are filled with fluid resin to combine the circular rim 11, the heat conduction layers 12 and the heat insulation layer 13 together.”

108. The Opponent states in their submissions:
“D2, whilst discussing heat loading issues in the context of bicycle wheels made from CFRP arising from friction heat created by the brake pads that touch the wheel rim during braking, notes that ‘A heat conduction layer is arranged on the region where the brake pads contact the circular rim to disperse frictional heat when braking, and then the frictional heat being conducted to the circular rim is decreased. Therefore, the carbon fiber rim of the present invention can prevent distortion of the carbon fiber rim when braking.’ Compare Büter #1 at [73] to [79] for a more detailed discussion. In summary, issues arising from heating of CFRP wheels in use, due to braking, are known form this document, as well as one possible solution to these. Why this is also relevant in the context of aircraft and motor car wheels, where heat is ‘transmitted’ by radiation and convection to the wheel as compared to by friction as is the case with bicycle wheels, is discussed in Büter #2 at [53].”

109. Renner#1 states at paragraphs 31 and 32:
“Document D2 (EP 27 43095 A1) referred to in the Büter Declaration and attached to that Declaration as AB-4 describes a carbon fibre rim for a bicycle wheel with surfaces that are contacted by brake pads. The surfaces include a heat conduction material designed to distribute heat generated by friction during braking.

Firstly, my view is that the high thermal conductive layer in D2 is not a load bearing structure. Secondly, in my view the wheel of D2 is simply not suitable and could not be adapted to be used with a motor vehicle or aircraft. Such an application would require far greater braking requirements that the wheel of D2 would not be able to handle. D2 addresses a fundamentally different problem in that the heat load is from friction, whereas the heat shield of claim 1 is designed to deal only with radiation and convection heat loads. These types of heat loads are not considered by D2 and there is simply nothing in D2 that is relevant to the problem addressed by claim 1.”

110. Büter #2 states at paragraph 53:
“Mr Renner ‘dismisses’ prior art documents D2, D3 and D6 as irrelevant because these documents do not show a wheel suitable for a motor vehicle or aircraft and address ‘a fundamentally different problem of heat from friction rather than from radiation and/or convection.’ At that level of generalisation, I disagree with such statement. For protection of a FRP wheel against excessive temperatures that could lead to wheel material degradation or failure, or heat conduction (into, within and out of the wheel), for example, it is irrelevant how the heat is generated or introduced. In my opinion, more important are the technical solutions available or developed to solve the task of overall "thermal management". Some solutions are equally applicable irrespective of whether the heat introduced into a FRP wheel structure originates due to friction, radiation or convection.”

111. Claims 8-10 and 12 are not limited to a motor vehicle wheel. I also note that claims 8-10 are not specific to the source of heat. Claims 1-7 and 11 are considered novel. I will consider claims 8-10 and 12 below.
Claim 8
112. I have found that the term load bearing structure provides minimal limitation on the scope of the claim. I also note that the mesh in D2 bears the load of the brake pad. Thus I am satisfied that the mesh is load bearing.
113. The following excerpt from paragraph 18 discloses a mesh that is embedded in the wheel rim:
“In one embodiment, the heat conduction material can be porous or has mesh structure. When thermally molding, resin in the carbon fiber composites of the circular rim 11 is melting with fluidity when heating. Thus, meshes of the metal grid are filled with fluid resin to combine the circular rim 11 and the heat conduction layers 12 together.”

114. I consider that D2 discloses all the features of claim 8. Consequently, claim 8 lacks novelty in light of D2.
Claim 9
115. Claim 9: The wheel according to claim 8, wherein the wheel is used for a motor vehicle or an aircraft.
116. D2 discloses a motor vehicle wheel. Claim 9 is novel in light of D2.
Claim 10
117. Claim 10: The wheel according to claim 8 or 9, wherein the high thermal conductive layer also serves as a load bearing structure for the heat shield structure and/or a subjacent structure.
118. D2 discloses a reinforcement mesh. This is considered a load bearing structure. Claim 10 lacks novelty in light of D2.
Claim 12
119. Claim 12 defines that heat shield structure is arranged between the brake disk and the spokes; the brake disk and the hub; the brake disk and the rim. D2 does not disclose the heat shield structure arranged in this way. Claim 12 is novel in light of D2.
Conclusion on novelty of claims in light of D2
120. Claims 8 and 10 lack novelty in light of D2.
Inventive step
Inventive step legal principles
121. 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).

122. 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.

123. 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
D1 (US 5,277,479)
124. I have found that claims 1 and 6-11 lack a novelty in light of D1 (US 5,277,479). It follows that these claims also lack an inventive step.
Dependent claims
Claims 2 and 3
125. Claim 2: The wheel according to claim 1, wherein, the heat shield structure comprises at least one heat reflecting layer.
126. Claim 3: The wheel according to claim 2, wherein the at least one heat reflecting layer is made from a metal or a ceramic material.

127. D1 does not disclose that the embodiment with a heat shield which comprises a mesh also comprises a heat reflecting layer. There is no evidence to support that a person skilled in the art would make such a modification. Claims 2 and 3 are considered inventive in light of D1.
Claims 4 and 5
128. Claim 4: The wheel according to any one of the preceding claims, wherein the heat shield structure comprises at least one low thermal conductive layer.
129. Claim 5: The wheel according to claim 4, wherein the at least one low thermal conductive layer is made from a continuum plastic and/or a porous plastic and/or a fiber reinforced plastic and/or a continuum ceramic material and/or a fiber reinforced ceramic material and/or a porous ceramic material.

130. D1 discloses a heat shield at column 4 lines 20 to 36:
“Further, for shielding heat from the brake drum, a method of disposing a heat insulating material integrally to the surfaces of the disk and the rim on the side of the brake drum by means of insert molding or the like may be considered. In this case, such an improvement can be applied to a portion, for example, as shown in FIG. 4, a surface 31 as a portion of the disk 2 or the entire surfaces 31 and 32 of the disk 2. Further, the heat insulating material may be applied to a partial surface or the entire surface 33 of the rim 1. As the heat insulating material 30 used herein, there can be mentioned, for example, a plate-like material comprising a heat resistant plastic, ceramic or an inorganic material together with a reinforcing material thereof, a slate plate comprising asbestos or the like. Any material having heat insulating property and strength can be used.”

131. Figure 4 is shown below:

132. The Opponent argued that it would be obvious to combine the embodiment of the embedded mesh (discussed above in relation to novelty) with the embodiment of the heat insulating material being integrally formed with the wheel, such that the mesh is covering the insulating material.

133. The embodiment in figure 4 is clear that the heat insulating material is on the surface of the wheel. There is no suggestion that it would be covered with another layer.

134. Renner#1 states at paragraph 29 and 30:
“Document D1 (US 5277479 A) referred to in the Büter Declaration and attached to that Declaration as AB-3 describes a wheel formed as a single piece from a fibre-reinforced thermoplastic resin. As stated in the Büter Declaration, D1 has a heat insulating material 30 in one version of the wheel, as shown in Figure 4 of D1. A list of possible materials is given as options for the insulating material, but as the name suggests these are all thermally insulating. In another version of the wheel, as shown in Figure 5 of D1, the wheel has a reinforcing layer that may be at an intermediate portion 18 or at the surface 19.

In my view the reinforcing layer is a completely separate consideration to the insulating layer. D1 does not seem to mention if it is possible to use both of these features in the same wheel. That is, there is no wheel described or shown in D1 with both a heat insulating material and a reinforcing layer. Even if they were to be combined, there is no way of knowing whether the reinforcing layer would lie under or over the insulating layer, or how this could be manufactured. D1 also doesn't mention or even recognise that using the reinforcing layer as a highly conductive layer might be advantageous, as most of the listed possible materials are not highly conducting and there is no discussion of the thermal conductivity of the reinforcing layer. Given that D1 suggests providing an insulating layer in order to protect the wheel from heat loads, I do not believe there would be any reason why someone would understand from D1 that combining the reinforcing layer at the surface with the insulating layer would be useful.”

135. I am not satisfied that the two embodiments would be combined by a person skilled in the art as a matter of routine. I consider claims 4 and 5 to be inventive in light of D1.
Claim 12
136. I have found that claim 12 is novel in light of D1, with the feature of spokes being absent from D1.
137. D1 states at column 3 lines 12 to 19:
“The resin wheel according to the present invention is a one piece molding product obtained through an injecttion molding or injection compression molding method by using a mixture of a partial aromatic polyamide resin and a fiber-reinforced thermoplastic resin and has a structure with no decorative holes in the disk, for avoiding the reduction of strength caused by the occurrence of weld during molding.”

138. Thus, D1 teaches away from adding decorative holes and thus spokes. There is no other evidence on this point. I consider that it would not be a matter of routine for a person skilled in the art to modify D1 such that it had spokes. Consequently claim 12 is inventive in light of D1.
D2 (EP 2 743 095)
139. I have found claims 8 and 10 lack novelty in light of D2, and so it follows that claims 8 and 10 also lacks inventive step in light of D2.
140. D2 discloses a bike wheel with a heat conduction layer in the rim to prevent distortion due to frictional heating.
141. Büter#1 states at paragraph 118:
“Although D2 relates to a bicycle wheel rather than a motor vehicle or aircraft wheel in claim 9, in my view, heat protection layers described in D2, such as the (mesh) heat conduction layer (12) and heat insulation layer (13) shown in Figures 5 and 6, could be easily incorporated into a composite wheel for a motor vehicle or aircraft wheel.”

142. Renner#1 states at paragraph 32:
“Firstly, my view is that the high thermal conductive layer in D2 is not a load bearing structure. Secondly, in my view the wheel of D2 is simply not suitable and could not be adapted to be used with a motor vehicle or aircraft. Such an application would require far greater braking requirements that the wheel of D2 would not be able to handle. D2 addresses a fundamentally different problem in that the heat load is from friction, whereas the heat shield of claim 1 is designed to deal only with radiation and convection heat loads. These types of heat loads are not considered by D2 and there is simply nothing in D2 that is relevant to the problem addressed by claim 1.”

143. The heat shielding on a bike wheel is for the purposes of protecting it from frictional heat whereas the heat shielding on a motor vehicle wheel is to protect it from radiative and convention heat. Although the claimed invention is not limited to the source of the heat which the heat shielding protects the wheel from, a person skilled in the art would recognise that a motor vehicle wheel would only need to be protected from radiative and convention heat from the brake, and not from the heat generated from friction directly on the wheel.
144. A crucial difference between the heat shield of D2 and the embodiments of the present invention is that the heat shield in D2 is only on the rim of the bike wheel, whereas the heat shield is on the wheel rim and the wheel centre in the present invention.
145. The practical modifications to D2 (such that it was suitable as a motor vehicle wheel as defined in claims 1-7, 9, 11 and 12) would require the heat shielding to elements connecting the wheel to the axle (i.e. the spokes) instead of (or as well as) the wheel rim.
146. I am not satisfied such a modification would be considered a matter of routine to a person skilled in the art.

147. The claims other than claims 8 and 10 are inventive in light of D2.
In light of CGK alone
148. The Opponent argued that the claims lack an inventive step in light of the common general knowledge. The Opponent’s argument relies on the evidence of Professor Büter. Professor Büter was asked about his knowledge of heat shielding for wheels.
149. Büter#1 states at paragraph 49 (with my emphasis in underline):
“I think an important point is even if you have the best thermally isolating heat shield on a composite wheel, you can only "buy time" for the heat to reach the wheel. The heat still needs to be brought out of the system somehow, and this can only be done with some sort of cooling or thermal management system. In cars, it is usually the case that the wheel is designed to utilise airstreams through and around the wheel to cool it down after braking. For wheels made of FRPs, the difficulty is again that the heat generally lingers in the area where the heat is first applied due to low thermal conductivity, so one solution is to also utilise a surface with high thermal conductivity to distribute the heat and avoid "hot spots", as discussed in the Goodrich patent and as I discussed in paragraph 39 above.”

150. Büter#1 states at paragraph 60 and 61:
“Griffith Hack then asked me various questions relating to the general considerations I would have when designing/manufacturing a composite wheel with an integrated heat protection layers.
Ideally, the metal reflective and/or distribution layers would perform best if they are very thin sheets of metal foil to maximise reflection and/or distribution. However, if you are trying to make a curved 3D shape such as a wheel, it would be difficult to apply (drape) a metal foil layer evenly without wrinkles. Instead, a woven metal material would be easier to direct over a curved structure because it has crosswise fibers that are not fixed to each other, which has the advantage of easier shear deflection (sliding between the crosswise fibers). It is possible to integrate a woven metal layer into the structure of the composite wheel during manufacturing. Additionally, when connecting another material with a composite material, the connection is stronger if the material is rougher and the bonding surface is higher, which means a woven material would have a stronger connection than a foil.”

151. In response to the attorney’s questions Professor Büter proposes a wheel with the features of the claimed invention.

152. The Applicant states in their submissions at paragraphs 110 to 117:
“At a threshold level, there are a number of fundamental defects in the Opponent’s evidence (and its approach) relating to inventive step.

No proper evidentiary basis is provided for the assertion that the invention as defined in any of the amended claims would be obvious in light of CGK alone.

A fundamental defect is that the Opponent’s expert witness was provided with and relied on art that was not CGK to form his views as to the inventiveness of the claimed invention.

Professor Büter was asked to suggest a solution to the ‘problem’ after having been provided with and considered the prior art patents referred to in the background section of the Opposed Application which clearly does not form part of the CGK.
The authorities establish that there is no general principle permitting ‘admissions’ in the specification of a patent to be used as the starting point for the assessment of inventive step. The Act requires a comparison between the invention as claimed and the relevant prior art base as established by appropriate evidence.
This fundamental defect is exacerbated by the fact that Professor Büter also relies on information disclosed within a working group that was composed of representatives from TÜV (Technischer Überwachungsverein - a technical inspection association), as well as representatives from OEM automobile companies. For the reasons detailed below, it is apparent that this information did not form part of the CGK. Indeed, there are significant doubts as to whether the information (or all of it) was publicly available at all. Relatedly, the information that Professor Büter was privy to as a result of his involvement with the Working Group indicates that his knowledge does not reflect that of the notional PSA.

Professor Büter’s opinions as to the inventiveness of the invention as claimed in the various independent claims must be understood in this context. It is apparent that these opinions do not reflect the knowledge of the non-inventive PSA at the Priority Date, or the approach that that person(s) would take as a matter of routine (if at all).

The Opponent’s expert evidence and its submissions are precisely the approach that the High Court in Minnesota Mining & Manufacturing Co & 3M Australia Pty Ltd v Beiersdorf (Aust) Ltd indicated did not demonstrate a lack of inventive step. The Opponent has created an artificial (and impermissible) universe of ‘prior’ art that does not reflect the reality facing the skilled person at the priority date and then cherry picked selected passages from this artificial universe to suit its case. In short, the Opponent has failed to show that a notional skilled person (unassisted by hindsight) would be led directly as a matter of course and with a reasonable expectation of success, to the claimed device.”

153. Asking an expert what they (as a person skilled in the art) would have done at the priority date when posed with a particular problem is fraught with difficulty. The expert must attempt to empty their mind of any information they have acquired after the priority date. The expert must then attempt to answer the question only in terms of what would have been a matter of routine without using any inventive faculty. I consider that it is difficult to exclude the possibility that, in his responses to the questions posed by the attorney, Professor Büter drew upon information that was not common general knowledge at the priority date. It is also difficult to eliminate the possibility that, in answering the question posed, the Professor Büter inadvertently utilised inventive reasoning.

154. There are sufficient doubts in my mind such that I am not satisfied that Professor Büter’s evidence establishes that the claimed invention lacks 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".

156. 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?

157. 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.”

158. The promise of the invention was recently considered in ESCO Corporation v Ronneby Road Pty Ltd [2018] FCAFC 46 which found that all the promises of the invention had not been achieved by the claimed invention.
Utility
159. The Opponent states in the submissions at paragraph 160 (with my emphasis in underline):
“As noted previously, it is not permissible to restrict or expand the clear limitations which the claim language imposes. Accordingly, the independent claims, bar claim 12 which specifically notes that the heat shield structure is arranged between the brake disk and the spokes [of the wheel]; the brake disk and the hub [of the wheel]; the brake disk and the rim [of the wheel]; as well as between the caliper and the spokes and the caliper and the rim, include embodiments where the composite material base structure of the wheel is not covered by the heat shield structure and is therefore exposed to the operating temperatures of brake system components, particularly where these use carbon-ceramic brakes, of up to 1000°C referenced in the Specification. Such parts of the uncovered base structure, which due to the very limited resistance to heat of CFRP wheels (CFRP being a composite material), will indeed be subject of thermal damage to the CFRP, see Specification, page 4 lines 1 to 10.”

160. The Applicant states in the submissions at paragraphs 174 to 177:
“The Opponent’s case on inutility suffers from a number of fundamental defects.

First, 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.” The Opponent asserts that it has led adequate evidence to support this ground but fails to identify the evidence that it relies on.

Secondly, the Opponent’s approach disregards the fact that the specification, including the claims, must be read through the eyes of the skilled reader who will construe it purposively, with a “generous measure of common sense”. Inutility is not made out by purposeful adoption of an embodiment that the skilled person would appreciate would obviously not work.

Finally, it is apparent from the specification that the promise of the invention is not to remove the risk of heat damage entirely but to reduce it in a practically acceptable manner having regard to the space constraints. For example, at page 7 lines 10-20 of the Opposed Application makes it clear that the promise is not to remove the risk entirely.”

161. Although the specification does not explicitly provide the promise of the invention, the “summary of the invention” (from page 3 line 12 to page 8 line 8) discusses several benefits of the invention (which I understand to be the implied promise of the invention). For example, the description provides an example of the benefits at page 5 lines 9 to 17:
“Therefore for wheels comprising a base structure that is at least partially made from a fiber reinforced plastic, a special heat shield structure is arranged on a wheel's base structure and is at least partially covering the base structure at least in the critical areas. Thus the flux of thermal energy into the wheel can be reduced and the deposition of thermal energy can be controlled and distributed, such that hot spots, which would lead to thermal damage, can be prevented. Thus the heat shield structure becomes an integral part of the wheel, allowing a controlled dissipation of thermal energy using the structure of the wheel.”

162. The claims define a heat shield, the purpose of which is to shield the wheel from heat. The heat shield comprises a high thermal conductive mesh. The heat shield is on the exterior of (and partially embedded in) the wheel. Because the claim defines the heat shield at least partially covering the wheel, this includes within its scope a wheel with parts that are not covered by the heat shield. However, a person skilled in the art would understand the need to add heat shielding in the appropriate areas such that the wheel was sufficiently shielded from the heat generated by the brake.
163. I consider the invention achieves the (implied) promise.
Support – legal principles
164. Section 40(3) states:
The claim or claims must be clear and succinct and supported by matter disclosed in the specification.
165. 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).
166. 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).
167. 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.”

Support
168. The Opponent states in their submissions at paragraphs 106 to 109 and 113 (with their emphasis):
“Original claim 7 specified that the at least one high thermal conductive layer is made from a metal sheet and/or a metal foil and/or a metal mesh and/or a metal fabric. That is, the layer is made of such structures, including a metal mesh.
Original description page 6 lines 16 to 19 indicate that the high thermal conductive layer may e.g. comprise a metal sheet, metal foil, a metal mesh (grid) or a metal fabric. In addition or as an alternative the same type of structures may be used but from materials other than metal, with a similarly high thermal conductivity.
Accordingly, based on the claims as these stood in the A1 version of the Specification, there is no support (or even under the less stringent fair basis test) for a feature according to amended claim 1 (or as accepted) which states:
‘the heat shield structure comprises at least one high thermal conductive layer comprising a mesh’.

We submit that it would be stretching credibility of any submission, in light of the specification as drafted, that the word ‘comprising’ as used in the claims is to be construed in its exclusive meaning of ‘consisting of’ or ‘composed of’. Rather, an inclusive meaning appears to be the only appropriate construction.
…
At best, the mesh identified in amended claim 1 would need to be defined as being a metal mesh in order to be supported in the specification as filed. If the mesh were to be made from a different material, in order for the mesh to indicate its function of ‘thermal conductance’ in the high thermal conductive layer, it would require to be specified as being of a material having a high thermal conductivity similar to metal (noting that the paragraph quoted above speaks of relatively high thermal conductivity and a base reference or level must be provided for meshes made from non-metals.”

169. The Opponent’s argument appears to be that there is an inconsistency between the optional features of claim 6 which define that the high thermal conductive layer is made from metal (sheet, foil, mesh or fabric), whereas claim 1 does not define the material that the mesh in the high thermal conductive layer is made from.
170. Claim 1 does indeed include within its scope a high thermal conductive layer comprising a mesh made from materials other than metal. Claim 6 provides the limitation that the high thermal conductive layer is made from a metal. Both claims are supported by the specification, and there is no inconsistency between the claims. I consider that the claims are supported by the specification.
Clear enough and complete enough disclosure – legal principles
171. 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.
172. 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?

173. 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?

174. 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
175. The Opponent states at paragraphs 197 and 198:
“We submit that without additional information, in the form of one or more specific example of what may (or may not) be a high thermal conductive layer, beyond merely stating in the description (C1 Specification, page 6 line 16 to 19) that such layer may include e.g. a metal sheet, metal foil, a metal mesh (grid) or a metal fabric, or that ‘Good results may be obtained [for a high thermal conductive layer] if materials with a relatively high thermal conductivity are used.’ The presence of such metallic structures in the layer in and of themselves do not allow a PSA to determine a level of thermal conduction which is required for such layer to be high thermally conductive, compare Büter #2 at [67].

It would require undue and lengthy experimentation for the PSA to devise in any specific case a thermal shield structure comprising a thermal conductive layer that has a mesh and that also serves as a load bearing structure for the heat shield structure and/or the subjacent base structure that answers the characteristic of being a ‘high’ thermal conductive layer, without having been provided with even one example to determine what would be the threshold between a medium and a high thermal conductance value of such layer. As noted elsewhere, the fact that a mesh made of metal (what type of metal?) can be present in a thermal conductive layer whose other constituent materials / structures are not defined, in and of itself does not make such layer one having high thermal conductance.”

176. I have found in above that a normal metal (with a thermal conductivity greater than the base) has ‘high’ thermal conductivity. Consequently, I consider that this aspect of the disclosure is enabling and provides a clear enough and complete enough disclosure.
Conclusion
177. Claims 1 and 6-11 lack a novelty and an inventive step in light of US 5,277,479. Claims 8 and 10 lacks novelty and an inventive step in light of EP 2 743 095.
178. These deficiencies can be overcome by amendment. I allow the Applicant 2 months from the date of this decision to propose suitable amendments to overcome the adverse findings in this decision.
Costs
179. Costs typically follow the event, however one aspect of this opposition which was atypical.
180. I note that although the ground of novelty was in the Statement of Grounds and Particulars, it was not pursued in the opponent’s written submissions and was only pursued in oral submissions after I had noted its apparent relevance. Had novelty been the only successful ground, I may have made a variation in the award of costs. However, the Opponent has been successful in the opposition on the ground of inventive step which they had pursued in written submissions.
181. Consequently, I award costs against the Applicant, Mubea Carbo Tech GmbH.
Xavier Gisz
Delegate of the Commissioner of Patents