CRRC Qishuyan Institute Co., Ltd v GE Global Sourcing LLC - [2019] APO 7

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
CRRC Qishuyan Institute Co., Ltd v GE Global Sourcing LLC [2019] APO 7

Patent Application: 2012222103

Title:Wheel frame, assembly and method

Patent Applicant:                   GE Global Sourcing LLC
Opponent:  CRRC Qishuyan Institute Co., Ltd
Delegate:  R Subbarayan
Decision Date:  6 February 2019
Hearing Date:  27 November 2018, in Canberra

Catchwords: PATENTS – opposition to grant of patent – claim construction where specification sets up its own dictionary – whether the claims are novel – whether the claims are inventive – whether the disclosure is clear enough and complete enough – whether the claims are clear – none of the grounds are made out – opposition does not succeed – costs awarded –variation to costs

Representation: Patent attorney for the applicant: Adrian Crooks of Phillips Ormonde Fitzpatrick
Patent attorney for the opponent: Christopher Goodhew

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2012222103

Title:Wheel frame, assembly and method

Patent Applicant: GE Global Sourcing LLC
Date of Decision: 6 February 2019
DECISION
The opposition is unsuccessful as none of the grounds has been made out. Subject to any appeal, the application should proceed to grant.
Costs according to Schedule 8 are awarded against the opponent. Parties to provide submissions within 2 weeks in respect of item 11 for which the application has sought variation in costs.
REASONS FOR DECISION

Patent application 2012222103 currently in the name of GE Global Sourcing LLC (the Applicant) was filed on 24 February 2012 by General Electric Company as a PCT application (PCT/US2012/026614) and claims an earlier priority date of 25 February 2011. Following examination it was advertised as having been accepted on 15 December 2016. Grant of the patent has been opposed under s59 of the Patents Act by CRRC Qishuyan Institute Co., Ltd (the Opponent). The opposition was heard in Canberra on 27 November 2018. The opponent chose to be heard through written submissions that included a first set of submissions dated 13 November 2018 (OS #1) and a second set of submissions dated 20 November 2018 (OS #2). The applicant appeared in person and filed their written submissions on 20 November 2018 (AS).
GROUNDS OF OPPOSITION
The statement of Grounds and Particulars (SGP) states that the application is being opposed under the following grounds:
·Section 18(1)(b) – The claimed invention lacks novelty and/or lacks inventive step.
·Section 40(2) – The complete specification does not disclose the invention in a manner which is clear enough and complete enough for the invention of claims 14 to 17 to be performed by a person skilled in the relevant art; and
·Section 40(3) - Claims 8 to 11 are not clear and succinct and supported by matter disclosed in the specification.
EVIDENCE
Evidence in this opposition comprises the following:
·Evidence in support comprising a declaration by Zhang Zaili dated 13 December 2017 with exhibits ZZ-1 to ZZ-24 (Zhang #1).
·Evidence in answer comprising a declaration by Gregory Tarbell dated 13 March 2018 with exhibits A-D (Tarbell).
·Evidence in reply comprising a declaration by Zhang Zaili dated 14 May 2018 (Zhang #2).
Mr Zhang has worked for over 9 years as a design engineer and manufacturing process engineer with CRRC-QSYRI Corporation which would appear to be a related entity of the opponent. His experience covers mechanical transmissions in wind turbines, haul trucks and rail systems.
Mr Tarbell is a qualified Mechanical Engineer who is working as Lead Engineer – Mechanical Component at GE Transportation, which is a wholly-owned division of General Electric Company. In the 6 years he has been with GE Transportation he has worked on transmission structures for off-highway vehicles (OHV) such as mining haul trucks and he has stated that he is therefore very familiar with OHV motorized wheel hubs.
SPECIFICATION
The specification states that the present invention relates to “wheel drive assemblies, and, more particularly, to wheel frames for use in wheel drive assemblies of off-highway vehicles”[1].
[1] Specification at [0001]
According to the specification large off-highway vehicles ("OHVs"), such as mining vehicles typically employ motorised wheels that are driven by electric motors through a planetary gear transmission. A single wheel assembly can weigh in excess of 10 tons and the inertia of these massive wheel assemblies can therefore affect the operation of the OHV. The specification states that “Accordingly, it is desirable to reduce wheel drive assembly weight while maintaining strength to support and move the entire heavy vehicle”[2].
[2] Specification at [0003]
The specification then states that large components within OHV wheel drive assemblies, such as wheel frames and wheel hubs, have been typically manufactured from separate pieces that have been joined by welding. Such weldments allow the fabrication of very complex shapes at relatively low cost and also enable the placement of more material only in those pieces that carry most of the load. The specification then notes that the “adequate heat treatment of very large weld joints has sometimes been challenging, and such joints have been difficult to fabricate”[3]
[3] Specification at [0004]
An object of the invention is then described in the following terms.
“Accordingly, it is desirable to provide unitary wheel assembly components shaped to minimize non-load-bearing material, without being so complex as to require welded fabrication”[4].
[4] Specification at [0004]
A number of consistory statements of the present invention then follow and these substantially mirror the wordings of each of the independent claims.
The specification then sets up a dictionary as to the meaning that should be ascribed to the terms ‘unitary’ and ‘integrally formed’ as used in the specification..
“In context of the invention, "unitary" refers to a component that is monolithic or otherwise made in a single piece of material. "Integrally formed" refers to monolithic or jointless components made in a single piece, even though the components may have different functions or physical configurations”[5].
[5] Specification at [0009]
The specification then describes preferred embodiments of a wheel frame 18 and wheel hub 22 in the wheel assembly of an OHV.
Figures 6, 7 reproduced below show a wheel frame according to the invention.
The wheel frame 18 comprises a barrel portion 52, a mounting flange 26 and a transition portion 28 between the mounting flange and the barrel portion. The entire wheel frame is formed in a single piece as a unitary or jointless structure, for example, by a casting process. The barrel portion 52 is of a uniform diameter and thickness, but adjacent to the hub end surface 53, a portion of the radially inward facing surface of the barrel portion is enlarged for receiving an electric traction motor 54.
Figures 9, 10 reproduced below show a wheel hub 22 according to the invention.
Hub 22 comprises a substantially cylindrical barrel 44 with a rim flange 42 at the inboard end 40. Ribs 46 extend from the inboard end 40 to the outboard end 48. The barrel 44 has a radially inward facing surface with an internal diameter that enables the barrel to fit around the barrel portion of the wheel frame with a close clearance. Similar to the wheel frame, the wheel hub is also formed as a unitary or monolithic cast body.
A plurality of threaded holes 41 are provided in the inboard end 40 for attaching the wheel hub to a torque tube 20. A plurality of bores 43 are also provided in the rim flange 42 for bolted attachment of an inboard wheel of the vehicle. The outboard end 48 is also provided with a plurality of threaded holes 49 for bolted attachment of a hub adapter 72.
The specification ends with 17 claims of which independent claims 1, 12 and 16 are as follows:
1.A wheel frame for a vehicle, comprising:
a body of unitary construction and having a flared cylindrical shape, with a radially inward facing surface and a radially outward facing surface that extend from an integrally formed mounting flange through a radially tapering transition portion and a substantially constant-radius barrel portion to a hub end that opposes and is of smaller radius than the mounting flange; and
the radially inward facing surface of the body including a portion adjacent the hub end of the body that is enlarged for receiving at least a portion of an electric motor assembly.
12. A wheel frame comprising:
a body of unitary construction and having a flared cylindrical shape, with a radially inward facing surface and a radially outward facing surface that extend from an integrally formed mounting flange through a radially tapering transition portion and a substantially constant-radius barrel portion to a hub end that opposes and is of smaller radius than the mounting flange; and
the radially inward facing surface of the body including a portion adjacent the hub end of the body that is enlarged for receiving at least a portion of an electric motor assembly,
wherein the body defines a plurality of apertures opened through the radially tapering transition portion-adjacent to the mounting flange, the plurality of apertures extend through the transition portion of the wheel frame at circumferentially symmetric locations and a plurality of axle mounts are disposed on the radially outward surface of the body adjacent to and in alignment with the plurality of apertures, and the wheel frame includes a supporting ring that is integrally connected with a concave cupped portion of each of the apertures.
16. A wheel hub for a vehicle, comprising:
a unitary cylindrical cast body having a first end with an integrally formed radially outward flange and having a second end opposite the first end, the unitary cylindrical cast body having at least a first plurality of bores configured axially through the radially outward flange to receive fasteners to secure the wheel hub to at least a first wheel rim, a second plurality of bores configured in the first end to receive fasteners to secure the wheel hub to a torque tube, and a third plurality of bores configured in the second end to receive fasteners to secure the wheel hub to a second wheel rim.
CLAIM CONSTRUCTION
The principles of claim construction were summarized by Bennett J in Danisco A/S v Novozymes A/S (No 2) [2011] FCA 282 at [37]:
·A patent is not a written instrument operating inter partes but a public instrument which must, if it is to be valid, define a monopoly in such a way that is not reasonably capable of being misunderstood (Welch Perrin and Co Pty Ltd v Worrel (1961) 106 CLR 588 at 610).
·The invention is ascertained from a fair reading of the specification of a whole. If it is impossible to do so that ‘is an end of the matter’ (Welch Perrin at 610).
·If a verbal or grammatical question can be resolved according to the ordinary rules of construction, that does not leave uncertain the ambit of the monopoly claimed (Welch Perrin at 610).
·It is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification (Welch Perrin at 610).
·If a claim is clear it is not to be made obscure simply because obscurities can be found in particular sentences in other parts of the document (Welch Perrin at 610).
·The meaning of the claims and the terms used in the claims may be made clear by using the specification as a dictionary of the jargon of the claims (Welch Perrin at 616).
·Once the nature of the invention has been appreciated, it is not to be ‘demolished’ by finding that particular phrases used could, out of context, be ambiguous (Welch Perrin at 617).
·The specification must be read as a whole (Welch Perrin at 610; Decor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 at 410).
·If words are used in a particular way in a specification whether or not by way of a formal dictionary and thereby it is shown that the draftsman used such words to have a particular meaning, that meaning must be given to those words in the claims (Decor Corporation at 410; Flexible Steel Lacing Company v Beltreco (2000) 49 IPR 331 at [76]–[77]).
·There is a fine line between reading down the words of a patent claim to reflect how a person skilled in the art would understand it in a practical and common sense way and impermissibly limiting the clear words of the claim because the reader skilled in the art would be likely to apply those wide words only in a limited range of all of the situations that they would describe (Sachtler GmbH & Co KG v RE Miller Pty Ltd (2005) 65 IPR 605 at [42]).
·An essential part of the process of construction involves understanding the nature of the invention described and claimed and the way in which the patentee has used words or phrases describing and then claiming the invention. It is appropriate to try to understand what the patentee seeks to convey by the words used, especially where those words convey matters of biological or technological complexity (Inverness Medical Switzerland GmbH v MDS Diagnostics Pty Ltd (2010) 85 IPR 525 at [15]).
·The patentee must define the invention with sufficient precision to permit the monopoly to be determined and to allow the general public to identify from the words of the claims the conduct prohibited (British United Shoe Machinery Co Ltd v A Fussell & Sons Ltd (1908) 25 RPC 631 at 650–651; Clorox Australia Pty Ltd v International Consolidated Business Pty Ltd (2006) 68 IPR 254 at [18]).
·If the monopoly as defined by the claims is reasonably capable of being misunderstood, it is open to the Court to conclude that the terms of the specification are so ambiguous that a proper construction must always remain a matter of doubt. In such circumstances the duty of the Court would be to declare the patent void (Martin v Scribal Pty Ltd (1954) 92 CLR 17 at 59 per Dixon CJ).
·The fact that there are alternative constructions of a claim does not mean that the claim is invalid for want of clarity (Welcome Real-Time SA v Catuity Inc (2001) 113 FCR 210 at [167]-[168]).
It is clear from the opponent’s submissions that their case in relation to novelty and inventive step depends heavily on the construction of the terms “body of unitary construction” and “integrally formed” in each of independent claims 1 and 12.
As I noted earlier, the specification states that “In context of the invention, "unitary" refers to a component that is monolithic or otherwise made in a single piece of material."Integrally formed" refers to monolithic or jointless components made in a single piece, even though the components may have different functions or physical configurations”.
The opponent submitted that the term ‘unitary’ and ‘integrally formed’ do not exclude a welded construction and that this is the view of Mr Zhang as well.
“Equally, in at least the 2nd Revised Edition of the Macquarie Dictionary (as reprinted to 1991), the meanings of “unitary” include:
1.   of or pertaining to a unit or units.
2.   pertaining to, characterised by, or based on unity.
3.   of the nature of a unit; having the individual character of a unit.
4.   serving as a unit, as of measurement or estimation.
In the evidence of Zhang of 13 December 2017, it is more simply put with, for example, the “body of unitary construction” referred to as the same as the “Figure 29, frame machining” reference at page 29 of D4 (5GEB25 Motorized Wheel Service Manual), Exhibit ZZ22.
“The bottom line is that there is nothing in the word “unitary” per se that, expressly or by implication, excludes a welded construction that may originally have comprised a flange casting and a rolled section, welded together and post-processed into a “unitary” wheel frame. We submit that there is nothing in paragraph [0009] that would exclude a welded assembly from falling within the definition “monolithic or otherwise made in a single piece of material”, after it has been welded.
By extension, we submit further that “integrally formed” can have any one of a broad sweep of meanings. For example, organs being “integrally formed into a human body” has as much validity as other non-mathematical meaning such as artistic circles “integrally formed into a work of art”. The key issue is encapsulated in Macquarie (infra), second meaning, that the formation is “necessary to the completeness of a whole”. Welding together of parts is not excluded, either expressly or by implication. This is entirely consistent with “…monolithic or jointless components made in a single piece” as used in paragraph [0009], after the parts have been welded”[6].
[6] OS #2 at page 4
While not specifically pursued in the Opponent’s written submissions, Mr Zhang has in his evidence submitted that the inclusion of the words “or otherwise” in the definition in paragraph [0009] would encompass a frame body that is non-monolithic and hence include within its scope bodies made in more than one piece.
The applicant submitted that paragraph [0009] of the specification clearly requires that ‘unitary’ means that the component is made from a single piece of material.
“5.4 As described at paragraph [0009] of the specification of AU'103
In context of the invention, "unitary" refers to a component that is monolithic or otherwise made in a single piece of material. "Integrally formed" refers to monolithic or jointless components made in a single piece, even though the components may have different functions or physical configurations.
5.5 In light of the above statement and the earlier passages in the specification of AU'103, it is clear to a person skilled in the art that "a body of unitary construction" as that expression is used in AU'103 including in the claims, is distinct from a body which is produced by forming two separate parts which are then joined together for example by welding (Tarbell [5]). While the joining of two separately formed parts might ultimately result in those parts being integral with each other, they would nevertheless not be "a body of unitary construction" as that expression is used in AU'103.
5.6From the perspective of a skilled addressee, a wheel frame having two different parts, made of different pieces of metal using different manufacturing methods, which are joined via welding, is not "a body of unitary construction" (Tarbell [8]).”
As noted earlier, one of the principles of claim construction is that if words are used in a particular way in a specification whether or not by way of a formal dictionary and thereby it is shown that the draftsman used such words to have a particular meaning, that meaning must be given to those words in the claims.
In the present case, paragraph [0009] of the specification clearly sets up a formal dictionary for the meaning of the terms ‘unitary’ and ‘integrally formed’ as used in the specification. Therefore these are the meanings that should be given to these terms.
In relation to the term ‘unitary’, paragraph [0009] states that this refers to a component that is monolithic or otherwise made in a single piece of material.
The Macquarie Dictionary Online defines ‘monolithic’ as follows:
adjective 1. of or relating to a monolith.
2. made of only one stone or a single block.
3. characterised by massiveness and uniformity; undifferentiated.
4. Electricity (of an integrated circuit) built on a single crystal.
‘Monolith’ is in turn defined as:
noun 1. a single block or piece of stone of considerable size, whether in the natural state, as Uluru, or fabricated, as in architecture or sculpture.
2. an obelisk, column, statue, etc., formed of a single block of stone.
3. Engineering a concrete, stone, or brick foundation sunk as an open caisson and excavated by a grabbing crane.
4. something resembling a large block of stone, especially in having a massive, uniform, or unyielding quality or character.

While the Macquarie definitions refer to monolithic as being made of a single stone or single block in the context of a large object (whether natural or man-made), in my view it is clear that the specification refers to monolithic in a similar vein, i.e. made in/of a single piece of material. This meaning is also confirmed by the further definition “or otherwise made in a single piece of material”. Mr Zhang’s submission in relation to the term “or otherwise” fails to take into consideration this further qualification of being made in a single piece of material even when it is otherwise made.
In my view, this definition requires that the body of the wheel frame to be made in a single piece, with the emphasis being very much on the mode of manufacture and not just the final product. In my view this construction would not include a wheel frame body that is made in different parts that are then welded together to form a single body.
Similarly, the definition in paragraph [0009] that ‘integrally formed’ refers to a monolithic or jointless components made in a single piece would clearly not include components that are made from a plurality of parts that are welded or otherwise joined together.
NOVELTY
It is well established that the general test for lack of novelty is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd, [1977] HCA 19 at [20]; 137 CLR 228 at 235:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement”.
This test is satisfied if the alleged anticipation discloses all the essential features of the invention as claimed (see Nicaro Holdings Pty Ltd v Martin Engineering Co, [1990] FCA 40; (1990) 91 ALR 513 at 517). In order to meet this requirement, the prior art must "contain clear and unmistakeable directions to do what the patentee claims to have invented" (The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited, [1972] RPC 457 at 486). In a similar vein, what a prior art document teaches is to be distinguished from what might be “included” or “encompassed”. “A prior broad disclosure thus may not be sufficient ‘in the absence of the skilled addressee understanding or perceiving’ the later claimed invention therein” (Sanofi-Aventis Australia Pty Ltd v Apotex Pty Ltd (No. 3), [2011] FCA 846 at [180]).
While the SGP listed a number of documents that are alleged to deprive the claimed invention of novelty and inventive step, the opponent’s written submissions for the hearing only discuss documents D1 and D4 in relation to independent claims 1 and 12 and some of their dependent claims. No lack of novelty submissions were made in respect of independent claim 16.
D1: US 4389586
This patent document relates to an electric motorized wheel for a large vehicle such as a 225 tone off-highway haulage truck. Figure 1 of this document is reproduced below:
The motorized wheel includes a wheel hub 15 that is rotatably mounted to a stator yoke 21 that is an integral part of a wheel frame structure 23. The wheel frame structure includes a flange 24 and is a non-rotating structure that is removably attached to the frame or body of the vehicle. An electric motor assembly comprising a stator 20 and a rotor 30 is received within the wheel frame structure.
The opponent submitted that wheel frame structure 23 of D1 discloses a wheel frame that has all of the features of claim 1.
From the depiction in figure 1, it is clear that wheel frame 23 comprises a body with a flared cylindrical shape, with a radially inward facing surface and a radially outward facing surface that extend from an integrally formed mounting flange through a radially tapering transition portion and a substantially constant radius barrel portion to a hub end that opposes and is of smaller radius than the mounting flange. While an electric motor assembly is received within the hub end of the body, I am unable to discern in the radially inward facing surface of the body an enlarged portion adjacent the hub end.
While the uninterrupted cross section depicted in figure 1 would suggest that the body of the frame structure is made in one piece, the applicant submitted that such wheel frames were typically formed by welding together two or more components and that the frame structure of D1 is not a body of unitary construction in the sense defined in the specification. They relied on the evidence of Mr Tarbell to support this submission, who has stated as follows:
As a person skilled in the art myself, I strongly disagree that casting a wheel frame (including a flange and barrel portion) as recited in the allowed claims of Australian Patent Application No. 2012222103 would have been “common and routine practice” at the time the present application was filed. Specifically, wheel frames such as those in the GE787 wheel unit were made in two parts (subsequently joined via welding) for at least two purposes, namely: (i) the different processes used for manufacturing the two parts resulted in the parts having different mechanical properties that were attuned to the particular stresses/environments of the parts in use; and (ii) separately manufacturing the two parts reduces the risk of gross manufacturing waste. Regarding the former, the barrel portion of the wheel frame is subject to carrying essentially half the entire load of the haul truck (e.g., hundreds of tons). Rolled steel tubes are particularly strong in resisting such lateral compression, as might harm an interior motor. Casting, in-and-of-itself (i.e., creating a cast barrel that has the same dimensions as a rolled barrel) would not necessarily result in a barrel portion that is robust enough for an OHV application. Regarding the latter, if there are any errors in manufacturing separate flange and barrel portions, only the impacted part (flange or barrel) is wasted. With a unitary cast body, on the other hand, any manufacturing errors result in the entire wheel frame being scrapped[7].
In other words, showing the wheel frame with an uninterrupted cross section makes understanding the drawing easier, and does not mean the wheel frame is not made of separate and joined parts, or is a “body of unitary construction[8].
[7] Tarbell at [10]
[8] Tarbell at [12]
D1 is totally silent on how the wheel frame structure is formed. While the frame structure depicted in figure 1 is an integral unit having a barrel portion and a radially extending mounting flange, that does not necessarily mean that it is formed in a single piece. It could well have been made in two or more parts that are then welded or otherwise joined together to form the finished product seen in figure 1. As discussed under the heading of “Claim Construction”, the definition of ‘unitary construction’ given in the body of the specification requires the body of the wheel frame to formed in a single piece of material.
While Mr Zhang has stated that “the casting of unitary wheel frame with complex structure, big size, high weight is common and routine practice, that means one-piece casting is the first and optimal choice…..”[9], none of the documents he has discussed in his evidence refers to casting the entire wheel frame as a single piece.
[9] Zhang #2 at [9]
While the wheel frame shown in figure 1 of D1, may well have been produced as a single piece, it is at least equally possible that it was produced in different parts which were then welded together to form the wheel frame structure.
In the absence of any written disclosure in D1 as to how the wheel frame structure 23 was produced, I cannot be satisfied, under the balance of probabilities, that the frame structure was produced in a single piece as required by claim 1.
Claim 1 is therefore novel over D1.
As indpendent claim 12 also includes all of the features of claim 1, it follows that it is also novel over D1.
D4: 5GEB25 Motorized Wheel Service Manual
This document is a Service Manual of the 5GEB25 Motorized Wheel manufactured by General Electric Company.
In the Chapter titled “1. GENERAL INFORMATION” a brief description of the Motorized wheel is provided under the sub-heading “1.2 DESCRIPTION” as follows:
The 5GEB25 Motorized Wheel is a force-ventilated AC motor which converts electrical energy into mechanical energy. This mechanical energy is transmitted to the wheel hub through a speed reducing transmission consisting of a double reduction gear train. The Motorized Wheel is mounted to the truck's axle box at the flange end and serves as the truck's axle, transmission and traction motor.
The major components are the Frame Structure, Sun Pinion, Planet Gears, Torque Tube, Wheel Hub and the removable motor. The removable motor is complete with rotor, rotor bearings, stator core and frame.
Motor torque is transmitted from the motor to the sun pinion and planetary gearing through a drive ring, which is press-fitted to the splined pinion end of the rotor shaft. The sun pinion is secured laterally by a bolted connection into the end of the rotor shaft through a retaining plate which is held by a snap ring.
The three planet-gear and planet-pinion assemblies rotate in their own bearings mounted in the frame structure. The planet pinions engage the internal ring gear of the torque tube. The planet gears engage the sun pinion.
The torque tube is bolted to the wheel hub to form an assembly which rotates about the frame on two large tapered roller bearings. The wheel hub provides the mounting surface for the tire rims.
The remaining chapters of the manual relate to the servicing and overhaul of the Motorized Wheel including disassembly of major components, overhaul procedures, assembly of major components and testing.
Figure 60 reproduced below shows a longitudinal outline of the motorized wheel, in which the wheel frame is designated by the reference numeral 65.
Figure 29 reproduced below is a figure of the wheel frame structure alone showing the dimensions of the different parts of the frame structure.
The opponent submitted that the wheel frame depicted in figure 29 discloses all of the features of claim 1. While not explicitly stated, it appears that they are relying on the uninterrupted cross-section of the wheel frame as disclosing that the body of the wheel frame is of a unitary construction.
It is quite clear from this figure that the wheel frame of the 5GEB25 motorized wheel has a body with a flared cylindrical shape, with a radially inward facing surface and a radially outward facing surface that extend from an integrally formed mounting flange through a radially tapering transition portion and a substantially constant radius barrel portion to a hub end that opposes and is of smaller radius than the mounting flange. It is also clear that the radially inward facing surface has a taper with an increasing diameter towards the hub end thereby disclosing the feature of the radially inward facing surface including a portion that is enlarged for receiving a portion of the electric motor assembly.
However similar to D1, there is no disclosure as to how the wheel frame body is formed. I agree with Mr Tarbell that the uninterrupted cross section of the wheel frame body depicted in figure 29 cannot be taken as a clear disclosure of the body being formed in a single piece of material.
Mr Zhang has also exhibited certain photographs of an actual product of the GEB25 (Exhibits ZZ8, ZZ12 - ZZ15 and ZZ24), but nothing in these photographs suggests that the wheel frame has a body of unitary construction.
Claims 1 and 12 are therefore novel over D4.
Other Prior Art
Although not pressed in the written submissions, Mr Zhang has in his evidence in support asserted that the invention of claim 1 is not novel in light of the GE 787 wheel motor assembly manufactured by General Electric and has annexed a number of photographs of an actual GE 787 wheel motor that he has inspected. One of these photographs (exhibit ZZ1) is reproduced below.
According to Mr Zhang, the wheel frame seen in this photograph has a “unitary body of flared cylindrical shape, said unitary body having an inside surface and an outside surface, and said surfaces each extending between a mounting flange, through a tapering transition portion and a substantially constant radius barrel portion to a hub end”[10]. However he also then concedes that this wheel frame is “constructed of two pieces welded and machined, not a one-piece casting”[11].
[10] Zhang #1 at [6]
[11] Zhang #1 at [15]
It is quite evident from the photograph that the wheel frame is made from two components that are joined together and it is therefore clearly not a body of unitary construction as defined in the body of the specification.
Claims 1 and 12 are therefore not anticipated by the GE 787 motorized wheel depicted in exhibit ZZ1.
Mr Zhang has also briefly discussed the disclosure of certain other prior art electric motorized wheels such as the ‘G705’ (Exhibit ZZ10) ‘Terex E1056 Electric Wheel Gear Unit’ (Exhibit ZZ16) with reference to certain photographs/drawings filed as exhibits. However these documents were not pressed in the written submissions and there is nothing in the photographs/drawings to establish that the wheel frames of these prior art have a unitary body.
INVENTIVE STEP
The test for whether an invention is obvious (non-inventive) is to ask if it would have been a matter of routine to proceed to the claimed invention. In Wellcome Foundation Ltd v V.R. Laboratories (Aust) PtyLtd [1981] HCA 12 at [45]; 148 CLR 262 at 286, it was stated:
“The test is whether the hypothetical addressee faced with the same problem would have taken as matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.”
The High Court in Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59; 212 CLR 411 at 433 stated that it is also permissible to use the reformulated “Cripps question”:
“Would the notional research group at the relevant date, in all the circumstances, which include a knowledge of all the relevant prior art and the facts, directly be led as a matter of course to try the invention as claimed in the expectation that it might well produce a solution to the problem.”
The opponent’s written submissions in relation to the ground of lack of inventive step only relates to dependent claims 5, 15, 16, and 17 and states that these claims “do not involve an inventive step as comprising mere matters of routine selection”[12]. In relation to dependent claim 5 which further defines that “the body is a one-piece casting”, it additionally states that the casting of unitary components has been established as common and routine practice in their evidence.
[12] OS #2 at [2.A.(ii)]
While the opponent has not specifically addressed claim 1, the submissions in relation to claim 5 would also apply to claim 1, because if it can be established that it was routine practice to form the wheel frame body by casting, then such a cast body would be a body of unitary construction.
In his evidence in support Mr Zhang has stated that “As a person skilled in the art, I submit that the casting of unitary components is common and routine practice”[13].
[13] Zhang #1 at [15]
Mr Tarbell has refuted this in paragraph [10] of his declaration that I have quoted earlier in paragraph [39] of this decision.
Mr Zhang in his evidence in reply has maintained that the casting of wheel frames is common and routine practice.
“9. I submit that the casting of unitary wheel frame with complex structure, big size, high weight is common and routine practice, that means one-piece casting is the first and optimal choice just as the saying "a body of unitary construction" in the Australian Patent Application No. 2012222103.
10. I disagree that Casting, in-and-of-itself (i.e., creating a cast barrel that has the same dimensions as a rolled barrel) would not necessarily result in a barrel portion that is robust enough for an OHV application, because we can select better material or better process to achieve or surpass the rolled barrel performance on the condition of same dimensions.
11. Importantly, the specification is silent as to how the process of casting a wheel frame is parameterized to achieve the result now implied and relied upon in evidence. As I have explained, the broadest claim is not restricted to casting the wheel frame, does not exclude a welded construction, and requires nothing of the wheel frame except that it be a wheel frame”[14].
[14] Zhang #2 at [9]-[11]
As both Mr Zhang and Mr Tarbell work for the opponent and applicant respectively and as both have relevant experience in the field of wheel assemblies, I can find no basis to prefer the evidence of one over the other. However in opposition proceedings the onus very much lies with the opponent to establish that on the balance of probabilities the claimed invention lacks an inventive step.
While Mr Zhang has asserted that casting of the wheel frame as a unitary structure is common and routine practice, he has not substantiated this assertion with some kind of documentary evidence.
All of the photographs of the wheel frames of actual electric wheel motors products that he has annexed as exhibits in his evidence appear to show the wheel frames as being made from two or more components that are welded or otherwise joined together. Although Mr Zhang insists that these fall within the definition of a body of unitary construction, I have already rejected such a construction. There is nothing in any of Mr Zhang’s exhibits to suggest that casting of wheel frames for large off-highway vehicles was routine practice or common general knowledge in the art.
Mr Tarbell’s statements as to the reasons why wheel frames were typically made from two or more parts welded together has not been disputed by Mr Zhang. While the specification of the opposed application, mentions that adequate heat treatment of very large welded joints has sometimes been challenging and difficult to fabricate, there is no evidence from the opponent to establish that this was a problem that was common general knowledge or known from the s7(3) prior art relied upon by them. Even if I accept this stated problem in the specification to be the starting point for assessing inventive step, given that the opponent has not established that making the wheel frame in a single piece by casting or other fabrication methods was common general knowledge, I cannot be satisfied that the person skilled in the art would have as a matter of routine been led to try and make the wheel frame in a single piece of material making it ‘a body of unitary construction’ in the sense that this term is used in this application.
Based on the evidence, I am not satisfied that the claimed invention lacks an inventive step.
SECTION 40 ISSUES
S 40(3) Lack of Clarity
The opponent submitted that claim 8 lacks clarity:
“This claim is unclear with reference to the at least one bore since the claim 6 from which it depends specifies that the “…at least one bore (be) configured to receive bolts to secure the wheel hub to at least a first wheel rim..”, and not to secure the wheel hub to a torque tube 20. The torque tube is at the other end of the hub to the mounting of the first wheel rim”[15].
[15] OS #2 at page 8
The applicant submitted that the definition in claim 6 that the wheel hub includes “at least one bore configured to receive bolts to secure the wheel hub to at least a first wheel rim”, requires nothing more than that the wheel hub includes at least one bore for the recited purpose and it does not preclude the existence of further bores for other purposes.
I agree. While claim 8 defines a first plurality of bores for securing the wheel hub to a torque tube, it also then defines a second plurality of bores for securing the wheel hub to the first wheel rim. It is clear that the second plurality of bores refers to the at least one bore defined in claim 6. Claim 8 is clear.
S40(2) Disclosure

While the opponent has stated in their written submission that “the complete specification does not disclose the invention in a manner which is clear enough and complete enough for the invention of Claims 14 to 17 to be performed by a person skilled in the relevant art”[16], there is no further submissions in support of this assertion. I can also find nothing in Mr Zhang’s evidence to suggest that he would have any difficulty in understanding or performing the invention of claims 14-17.
[16] OS #2 at page 5
This ground of opposition has not been made out.
ACCEPTANCE – Bar to Sealing
The opponent submitted that independent claim 1 that is directed to a wheel frame and independent claim 12 that is directed to a wheel hub are not linked by any common novel feature and that therefore the application is for more than one invention and should not have been accepted.
While section 40(4) of the Act requires that “the claim or claims must relate to one invention only”, lack of unity of invention is not available as a ground of opposition under section 59 of the Act. I also note that quite correctly, this was not listed as a ground of opposition in the SGP.
I do not therefore intend to go into the merits of this submission from the opponent.
CONCLUSION
The opposition is unsuccessful as none of the grounds has been made out.
Subject to any appeal, I direct that the application should proceed to grant.
COSTS
Costs normally follow the event. As the opposition is unsuccessful I award costs against the opponent. While I would normally award costs according to schedule 8, the applicant submitted that the present circumstances warrant a variation to the costs. More specifically they submitted that the opponent’s first set of written submissions does no more than repeat the matters set out in the SGP and did not provide any proper indication of how the opponent intends to press its case. It was also their view that even the second set of written submissions did not clearly articulate the opponent’s submissions in relation to some of the grounds like s40(2) disclosure and also attempts to introduce new grounds such as bar to sealing and lack of support. They requested that I should award them the actual costs for preparation of case for hearing and attendance at the hearing.
I agree that the first set of written submission whilst filed within the deadline for submissions is clearly lacking in any useful submissions that would indicate to the applicant the issues that they need to respond to. The need for a party to file detailed and meaningful written submissions is even more critical when the party intends to appear only through written submissions as in the present case. While the second set of submissions addressed a number of shortcomings of the first set of written submissions, they still do not provide submissions to substantiate the alleged disclosure deficiency of claims 14-17 and attempt to introduce non-pleaded grounds as noted by the applicant. The second set of written submissions was also filed 6 days after the deadline for filing the submissions.
In my view, such circumstances justify a variation to the quantum of costs mentioned in Schedule 8 at least in relation to ‘Item 11 – Preparation of case for hearing’. I am therefore inclined to award costs at twice the amount specified in respect of Item 11. However as the opponent did not have the opportunity to make submissions in relation to the variation in costs sought by the applicant, I am required by regulation 22.8(1) to provide the parties a reasonable opportunity to make submissions on this matter. I therefore invite the parties to make such submissions within 2 weeks from the date of this decision. All other relevant costs will be as per Schedule 8.
R Subbarayan
Delegate of the Commissioner of Patents