Alexander Rollo Spowart v Quantum Glass Limited
[2005] APO 28
•6 June 2005
ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 758434 in the name of ALEXANDER ROLLO SPOWART
Title: Security Printing
Action: Opposition by QUANTUM GLASS LIMITED under section 59 of the Patents Act 1990
Decision: Issued 6 June 2005.
Abstract
The opponent raised grounds of entitlement, novelty, inventive step and section 40/fair basis. The invention lies in a covert security feature for a document which can be identified by examination of its visible wavelength absorption spectrum, measured either in reflective or transmissive mode, in response to broad-band visible wavelength photon radiation, and the feature further exhibits no UV, visible or IR stimulated output.
Under section 40, issues of fair basis and lack of clarity were raised. After a proper construction of the specification and claims, none of the claims were found to lack clarity and neither were they found to lack fair basis.
Ten citations were raised against novelty and inventive step. Four of these were found to have not been made available to the public before the earliest priority date of the opposed application. A further two were found to be not relevant for novelty and inventive step. The remaining four documents did not disclose all the features of the invention as claimed in the claims and hence did not render the opposed invention as lacking in novelty. The opposed invention did not lack an inventive step in light of the common general knowledge, or the remaining four documents when considered in combination with the common general knowledge.
The opponent was unable to establish that the applicant was not entitled to the invention.
The opponent was unsuccessful on all grounds. Costs were awarded against the opponent Quantum Glass Limited and in favour of the applicant Alexander Rollo Spowart.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 758434 by ALEXANDER ROLLO SPOWART and an opposition under section 59 of the Patents Act 1990 by QUANTUM GLASS LIMITED.
BACKGROUND
Kelsill Limited filed patent application No. 758434 under the provisions of the Patent Cooperation Treaty (PCT) on 8 November 1999. All rights in the application were subsequently assigned to Alexander Rollo Spowart. The application claims priority from a United Kingdom basic application GB 9824246 filed on 6 November 1998. The application was examined and advertised accepted on 20 March 2003.
Quantum Glass Limited filed a notice of opposition on 20 June 2003. A statement of grounds and particulars was filed on 19 September 2003. The service of evidence in support and evidence in answer was completed on 14 September 2004. The time for serving evidence in reply expired on 14 December 2004 without the filing of any evidence.
A hearing to deal with the substantive opposition was held in Canberra on 11 March 2005. Mr Bill Bennett, patent attorney of Pizzeys Patent and Trade Mark attorneys represented the applicant on behalf of the applicant’s attorney, Wray & Associates, Perth. The opponent’s patent attorneys Davies Collison Cave, Sydney, by a letter dated 10 March 2005 indicated that the opponent did not wish to appear in the matter and would not be represented at the hearing. They also indicated that they would not be filing written submissions.
EVIDENCE
Evidence in support consists of declarations made by:
· Wendy Henderson, dated 17 March 2004 and exhibits WH-1 to 10. She states that she is currently a senior patent attorney in Fitzpatricks, a patent attorney firm in the UK, which she joined in January 1990. She further states that she has a B.Sc. degree in Physics, is a fully qualified Chartered Patent Attorney and European Patent Attorney, a Chartered Physicist and a Member of the Institute of Physics.
· Alan Fortune, dated 15 March 2004. He states that he is currently a director of Quantum Glass Limited, Glasgow, UK. He further states that he has background knowledge of the banking industry, a comprehensive knowledge of the method of manufacturing glass, doping glasses and spectroscopy (acquired over the last seven years).
Evidence in answer consists of declarations made by:
· Alexander Rollo Spowart, dated 2 September 2004. He states that he is the sole inventor and proprietor of the application under opposition. He further states that he has a B.Sc. with Honours in Physics and a PhD in Physics, holds a Fellowship both in the Institute of Physics and the Institution of Electrical Engineers and is a registered Chartered Engineer.
· John Cooper, dated 8 September 2004. He states that he is currently a Director and senior patent attorney in Murgitroyd & Company Limited, a patent attorney firm in the UK. He further states that he has a B.Sc. degree in Electrical and Electronic Engineering, and is a Chartered Patent Attorney and a European Patent Attorney.
THE SPECIFICATION
The specification under opposition was advertised accepted on 20 March 2003. The specification commences by stating that “The invention relates to materials and techniques relating to security printing.” It then indicates that the invention in its broadest sense is concerned with the provision of security in relation to documents, vouchers, packaged goods and tokens of value, examples of which are banknotes, cheques and drafts, bond and stock certificates, and credit and bank cards. Further on it states that, “Documents of this nature have the requirement to be as secure as possible against forgery and falsification and for this purpose it is desirable that they exhibit both covert and overt security features.” This is followed by a discussion of the prior art and its defects and a finding that there is “…a requirement for improved forms of both covert and overt security features, preferably ones which can be used with existing printing technology at modest cost.”
This is followed by the consistory statement of the invention, detailed description of the invention and an example. The specification ends with twenty-one claims, including two independent and four omnibus claims. The independent claims, 1 and 16 read as follows:-
1.A method of providing a document with a covert security feature in which the document is provided with at least one inorganic dopant, the dopant being of a material which can be identified by examination of its visible wavelength absorption spectrum, measured either in reflective or transmissive mode, in response to broad-band visible wavelength photon radiation, in which the dopant is fused with other elements and micronised into a fine powder before being applied to or otherwise incorporated into the document, thereby altering said visible wavelength absorption spectrum of the dopant, and in which the dopant exhibits no UV, visible or IR stimulated output.
16.A dopant for use in providing a document with a covert security feature, comprising one or a combination of the elements listed in Table 5, in elemental form or as an oxide or salt, which can be identified by examination of its visible wavelength absorption spectrum, measured in either reflective or transmissive mode, in response to broad-band visible wavelength photon radiation, fused with other elements and micronised into a fine powder, thereby altering said visible wavelength absorption spectrum of the dopant, and which dopant exhibits no UV, visible or stimulated output.
The elements listed in Table 5 are: Barium, Lanthanum, Lead, Magnesium, Strontium, Titanium, Chromium, Iron, Caesium, Molybdenum, Nickel, Tungsten, Cobalt, Sodium, Potassium, Terbium, Zinc, Samarium, Praseodymium, Europium, Boron-10, Neodymium, Holmium, Thulium, Cadmium, Antimony, Erbium, Lutetium, and Tin.
STATEMENT OF GROUNDS AND PARTICULARS
The opponent raised grounds of entitlement, novelty, inventive step and section 40/fair basis. As the opponent did not appear at the hearing, nor did they file any amendment to the statement of grounds and particulars, the grounds to be addressed in the opposition remain unchanged.
DECISION
The applicant made oral submissions at the hearing. I shall refer to these as well as the written submissions from both parties made in the filed evidence and the statement of grounds and particulars.
Entitlement
The opponent had submitted in the statement of grounds and particulars,
“Alexander Rollo Spowart, who is the nominated inventor and applicant, was a Director of Quantum Glass Limited between 21 June 1996 and 19 September 1997. By virtue of contract, including consultancy agreement, confidentiality agreement, and IP purchase agreements, entitlement to any invention developed by A.R. Spowart vests with Quantum Glass Limited.”
Neither of the opponent’s declarants have elaborated on the above matter, nor have they provided any evidence (such as copies of contracts, confidentiality agreements, assignments etc.) to substantiate the above submission.
The applicant has responded as follows:-
·He agrees that he was a Director of Quantum Glass Limited between 21 June 1996 and 19 September 1997.
·In the matter of entitlement to the invention of the application under attack he states:-
“It is true that certain intellectual property rights (IPR) were assigned by me to Quantum Glass. However these rights did not include any rights relating to the invention that is the subject of the present patent. It is completely untrue that the effect of any contracts or agreements between myself and Quantum Glass was that entitlement to any invention developed by myself would vest with Quantum Glass.
…..IPR covered by agreements between myself and Quantum Glass were restricted to (a) technology for fabricating high efficiency light emitting glasses (which technology is completely unrelated to the subject matter of the present patent) and (b) technology for fabricating glasses which either emit or absorb infrared radiation. This latter technology was intended for use in security printing applications and to this extent only is related to the subject matter of the present patent.
However, the invention of the present patent is concerned explicitly with visible wavelength absorption spectra and is therefore quite different and distinct from any technology related to my previous association with Quantum Glass. The idea of using visible, as distinct from infrared, absorption spectra as a basis for covert security measures did not occur to me until after my association with Quantum Glass had terminated. I have never had any reason to believe that Quantum Glass had any legitimate basis for claiming ownership of the subject matter of the present patent. I believe that I have scrupulously respected any obligations that I had or have to Quantum Glass with respect to confidentiality, trade secrets and IPR.”
The opponent did not file any evidence in reply challenging Dr Spowart’s statements relating to entitlement. The opponent also did not appear at the hearing. In such matters the standard of proof required is the civil standard, that is, the balance of probabilities, as set out by the Court of Appeal in Dunlop Holdings Ltd.'s Application (1979) RPC 523. In applying this standard of proof, as the Commissioner is functioning as a tribunal, it is generally incumbent upon an opponent to establish their case. I have no evidence (such as copies of contracts, confidentiality agreements, assignments etc) before me which establishes that Quantum Glass Limited was entitled to rights in the opposed invention. Accordingly I find that the opponent has not established that the applicant was not entitled to the invention.
Claims Construction, Section 40/Fair Basis
Several matters were raised under this ground in the statement of grounds and particulars and this was repeated by the opponent’s declarant, Wendy Henderson. These matters related to lack of clarity of claims and lack of support for the claims in the description (fair basis of claims). I shall address these on an individual basis
Issue 1: The opponent noted that the claims required the security feature to be ‘covert’, i.e. to have no visible effect. They noted that all the claims (except claim 17) specify “a document with a covert security feature”, i.e. the meaning of “document” in each of claims 1 to 16 implied a “document” which has some security feature which is invisible except to special observation means, and that this meaning was confirmed by various statements in the description and yet this was contradicted by various statements both in the claims and description as outlined below:
(i)Claim 1 specifies “the dopant being of a material which can be identified by examination of its response to visible wavelength photon radiation”.
(ii)Figs. 4-7 and claim 10 specify that the dopant is “illuminated with broad-band visible light to produce a reflectance spectrum with frequency components generated by the dopant…”. (The opponent noted that the reflected light will inherently have visible wavelengths within the broad-band spectrum of the incident visible light).
(iii)Comparing the inventive spectra of Figs. 4-7 with the prior art spectra of Figs. 1-3 (see line 29 on page 6 to line 12 on page 7), since the colours represented by the visible wavelength spectra of Figs. 1-3 are visible colours in the Pantone range, then it follows that the colours represented by the visible wavelength spectra of Figs. 4-7 must also be visible colours.
The opponent concluded that, the ‘covert security feature’ (dopant) functions by producing detectable effects within the wavelength range that is visible, and that this was exactly contrary to the parts of the description which state that the dopant effects are invisible.
The applicant (Dr Spowart) responded as follows in his declaration:-
“…Ms Henderson’s …comments appear to reflect a lack of understanding of the technology and associated terminology. With regard to the supposed contradiction between the security features being “covert” and the dopant being “identifiable”, it is important to understand the meaning of the word “covert” in this context……a covert security feature must not be visually apparent to a casual observer. However, the feature must at the same time be identifiable, by whatever means are appropriate, in order to allow the authenticity of a document to be verified.”
I note that the term “covert security feature” has been defined in the opposed description. The basis for accepting a definition in the description, of a term used in the claims lies, in the Rules of Construction (see Decor Corp v Dart Industries 13 IPR 385). In particular the Dictionary Principle (“In some cases the meaning of the words used in the claims may be qualified or defined by what is said in the body of the specification”) is applicable in this matter (see British Thomson-Houston Company Ld. v Corona Lamp Works Ld., (1922) 39 RPC 49). I note that there is no conflict between the parties regarding the meaning of the term “covert security feature”. Thus in this case the term “covert security feature” has been defined in the specification at page 1, lines 17-20 as, “Some security feature which is not visually apparent to the normal user”. Also as the applicant Dr Spowart has indicated, “…the feature must at the same time be identifiable, by whatever means are appropriate, in order to allow the authenticity of a document to be verified.” I have reviewed the matter raised by the opponent which allegedly contradicts the covert nature of the security feature and am of the opinion that this matter is clearly referring to the behaviour of the feature when under verification. The description clearly indicates that the covert feature is not visible to the eye of the casual observer and also, “…covert because they exhibit no UV, visible or IR stimulated output to be observed by a counterfeiter” (page 4, lines22, 23). Thus the feature does not respond to stimulation in a manner that would reveal it to a counterfeiter as a casual observer. Regarding detection of the feature the description refers to subjecting the document under examination to light from a 4 watt bulb and reading the reflected/transmitted light using pattern recognition software. There is no indication at any stage that the security feature emits any radiation in response to the stimulation, it merely reflects/transmits the visible radiation wherein certain portions of the incident radiation may be absorbed. I do not see any contradiction between the covert nature of the security feature and its behaviour when under verification. I find that for this issue the opponent has not shown the claims as lacking clarity or as having no support in the description.
Issue 2: The opponent submitted that difficulties arose from defects in the informational content of Figs. 4-7, and consequent lack of clarity and support for the claims. They stated:
“In each of Figs. 4-7, the respective graphs purport to be visible reflectance spectra, according to lines 7-12 on page 7. The horizontal axis in each of Figs. 4-7 is labelled “Wavelength (nm)”, and the vertical axis is labelled “%T”, but this is unclear since “T” is neither a recognised symbol for optical reflectance, nor an abbreviation of ‘reflectance’. Moreover, in the complete absence from the as-filed application of any suggestion of light amplification by the dopants of the invention, is not seen how it can be possible for reflected light over much of the wavelength ranges in Figs. 4-7 to be in excess of 100%, in contravention of well-established natural law. Thus the claims do not define the matter for which protection is sought. The claims are therefore not clear, and are not supported by the description. Similar difficulties arise from defects in the informational content of Fig. 8 and 10…”
Dr Spowart responded as follows:
“…the reason why some of the absorption spectra show reflectance or transmission values greater than 100% is because these values are relative values, not absolute values. Such relative values are the normal output from standard spectrometer equipment, as would be understood by any working physicist. Such values would only be interpreted as being absolute values if this was explicitly stated.”
I note that there was no rebuttal of these submissions by the opponent. Further the opponent did not provide any evidence in support of their assertions to show how the skilled addressee would interpret the information provided in Figs. 4-7, 8, 10. The onus is clearly on the opponent to prove their case. In this matter the opponent has not proven that the reason for displaying the transmission values greater than 100% is other than that stated by Dr Spowart and consequently has caused the specification to lack clarity and the claims to lack support in the description.
Issue 3: The opponent submitted that claim 4 was not supported by the application as filed. In particular they stated:
“Claim 4 requires the dopant to be mixed with an element (or its salt or oxide) whose atomic number (‘Z’) is greater than 36, and claim 5 specifies that such an element may be Strontium (Z=38), Lanthanum (Z=57), or Bismuth (Z=83). The latter is based on lines 20-24 on page 11. However there is not disclosure (sic) in the as-filed application for the relevant Z to be greater than 36, other than for the three specific examples of Z=38, Z=57, and Z=83.”
The applicant did not address this matter in the evidence in answer. Looking at the description I note that at page 11, lines 20-24 it states:
“In many compositions, the structure and magnitude of absorption peaks can be controlled by including a substantial quantity (> 20% by weight) of a high atomic number Z element in the batch composition (lanthanum, bismuth, and strontium work well as examples).”
Thus the description has not specified a precise range of Z values. However the description refers to a high atomic number Z element and provides some examples. There is no indication in the description that this high atomic number is to be limited only to the examples given. The issue arises from claim 4 defining “an element or its salt or its oxide with an atomic number greater than 36”, which value was not specifically disclosed in the description. Thus the issue is one of lack of fair basis. The general principle underlying fair basis is that in order for a claim to be fairly based, there must have been a "real and reasonably clear disclosure of its subject matter in the specification" - see CCOM Pty Ltd v Jiejing Pty Ltd, 28 IPR 481 and (1994) AIPC 91-079. The High Court in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58 (18 November 2004) had stated regarding “real and reasonably clear disclosure” that:
“Section 40(3) requires, in Fullagar J's words, "a real and reasonably clear disclosure." But those words, when used in connection with s 40(3), do not limit disclosures to preferred embodiments.
"The circumstance that something is a requirement for the best method of performing an invention does not make it necessarily a requirement for all claims; likewise, the circumstance that material is part of the description of the invention does not mean that it must be included as an integer of each claim. Rather, the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification."
Fullagar J's phrase serves the function of compelling attention to the construction of the specification as a whole, putting aside particular parts which, although in isolation they might appear to point against the "real" disclosure, are in truth only loose or stray remarks.”
The question of whether there has been a "real and reasonably clear disclosure" must be approached through the eyes of the person skilled in the art and bearing in mind the common general knowledge. Thus the issue here is if the disclosure of the term ‘high atomic number’ coupled with the examples provided in relation to a chemical element, is sufficient to constitute a real and reasonable disclosure of a chemical element with an atomic number greater than 36. The examples provided show atomic numbers of 38, 57 and 83. Thus they clearly satisfy the requirement of Z greater than 36. I do not find any justification to support the contention that definition of a substance with an atomic number greater than 36 has no support in the description. There is no explicit statement in the description for a material with an atomic number greater than 36, but the disclosure at page 20 clearly requires materials with high atomic numbers and the examples provided range from 38 to 83. Based on this disclosure I do not find that claim 4 lacks fair basis as the feature of claim 4 under dispute does have a real and reasonably clear disclosure in the description.
Issue 4: The opponent submitted that “the wording of claim 10 is not comprehensible, and claim 10 is therefore unclear.”
The applicant’s declarant, Mr Cooper has responded to this matter indicating that the claims had been amended in response to similar concerns raised in the European Patent Office. Claim 10 reads as follows:
“10. A method of providing a document with a covert security feature as claimed in any preceding claim, in which the dopant is such that, when the document is illuminated with broad-band visible light to produce a reflectance spectrum with frequency components generated by the dopants and by other reflecting substances contained in the document, said spectrum contains minimal frequency overlap between the components of the spectrum generated by the dopant and that part of the spectrum generated by other substances contained in the document.”
The opponent has not provided details on precisely which portions of the claim are not comprehensible. Looking at claim 10, it defines a particular feature relating to the provision of a document with a covert security feature. The particular feature relates to a response received from the document when it is illuminated with broad-band visible light. The response consists of a reflectance spectrum made up of a response from the dopant and a response from the other reflecting substances contained in the document. The condition laid down in the claim is that the reflectance spectra of the dopant and of the other reflecting substances have a minimal frequency overlap. I do not find any matter in claim 10, as currently framed, which indicates a lack of clarity or which is incomprehensible.
Issue 5: The opponent raised three matters relating to claim 11 and claim 1 as follows:
1. Claim 11 … requires that “when the document is illuminated by broad-band visible (sic) the frequency components generated by the dopant are invisible to the human eye”. This claim is not comprehensible in its wording as filed. Moreover, the phrase “broad-band” is not explained or used in the application (other than in a non-defining sense in claims 10 and 11), and accordingly there is no explicit basis in the application for anything to be “broad-band”.
2. It appears that claim 11 requires claim 1 to be limited to the extent that the dopant generates frequency components that are invisible. Consequently, claim 1 must be interpreted as comprising dopants that generate both invisible and visible frequency components. However, as previously discussed, visible frequency components are necessarily not “covert security features”. This shows further unclarity in claim 1.
3. Since it has already been detailed above how the effects of the inventive dopants are within the range of visible wavelengths, claim 11 implies that these visible-wavelength effects are somehow invisible to the human eye. However this important effect is nowhere explicitly described or explained within the application as filed. Consequently, both claims 1 and 11 are in this respect unclear and unsupported.
The applicant’s declarant indicated that claim 11 had been amended to overcome the clarity objections raised above. Current claim 11 reads as follows:
“11. A method of providing a document with a covert security feature as claimed in any preceding claim, in which the dopant is such that, when the document is illuminated with broad-band visible light the absorption features of said visible wavelength absorption spectrum are created at wavelengths to which the human eye is insensitive.”
Item 1: I note that the clarity issue regarding use of the term ‘invisible to the human eye’ has been resolved by use of the term ‘wavelengths to which the human eye is insensitive’ in current claim 11 above. Also as the term, ‘said visible wavelength absorption spectrum’ referred to in claim 11 has been defined in claim 1, claim 11 reads clearly. Regarding use of the term ‘broad-band visible light’, a dictionary (The Oxford English Dictionary, Second Edition, 1989) indicates that “broad-band” is a band with a wide range of frequencies. Thus this term merely refers to visible light with a wide range of frequencies or white light. The description has used this term in the consistory statement of the invention at page 3 and has variously referred to:-
· use of a 4 watt torch bulb which emits plenty of visible light but very little IR, and
· a visible wavelength absorption spectrum
both of which clearly encompass broad-band visible light. I therefore find that the use of ‘broad-band visible light’ in claim 11 is consistent with its plain meaning and it also finds relevant support (a real and reasonable disclosure (see Lockwood v Doric (supra)) in the description.
Item 2: The opponent asserts that visible frequency components are necessarily not “covert security features”. This matter had been addressed under Issue 1 above where I concluded, “I do not see any contradiction between the covert nature of the security feature and its behaviour when under verification.”
Item 3: This issue was addressed under Item 1 above where current claim 11 refers to ‘wavelengths to which the human eye is insensitive’. Thus the contradiction raised in the objection above is no longer relevant. However I shall consider whether the matter raised lies in alleged lack of support in the description for the feature of claim 11 wherein the visible-wavelength effects of the inventive dopants are somehow ‘wavelengths to which the human eye is insensitive’ Thus the two issues here are;
·How does the visible wavelength effect of the dopant remain insensitive to the human eye?
·Is there a disclosure of this feature of claim 11 in the description?
A proper reading of the specification discloses that the response of the dopant is only to visible light. This response is not an emission but only a reflectance/transmission where some frequencies are absorbed. The consistory statement of the invention at page 3 of the description discloses:
“…the dopant being of a material which can be identified by examination of its visible wavelength absorption spectrum, measured either in reflective or transmissive mode, in response to broad-band visible wavelength photon radiation,…”
The absorption does not result in a visible effect, for example, such as a colour response. Page 6 of the description discloses:
“Dopants…provide high optical absorption yet give optical transparency because their absorption features are created at wavelengths to which the human eye is insensitive.”
“Our dopants are engineered to give no visible signal, such as fluorescence, upon illumination by UV, visible, or IR radiation and are hence not easily replicated as has happened with fluorescent inks, and other emitting technologies.”
The absorption spectrum is such that the reflected/transmitted light will appear no different from the incident light to the naked eye. The description makes it clear that a proper optical reader and selected software enables a detection of the absorbed frequencies. See for instance:
·Page 5, lines 24-28, “Pattern recognition software to identify, within 1 msec, the complex signature of our synthesised dopants is readily available from suppliers in the public domain, having been used in optical and nuclear spectrometry for 30 years.”
·Page 6, lines 8-22; page 8, lines1-29 discloses use of optical fibres as a light source and also as a carrier for the reflected/transmitted ray. Reference is made to other associated equipment which enables a quick reading and detection to be carried out.
Thus the two issues raised have been addressed in the description shown above. I do not consider that claim 11 lacks clarity and neither do I find that it is not supported by the description.
Issue 6: The opponent identified defects in claims 12-14 as follows:
“Claims 12-14 specify shifting or altering of the spectrum of the dopant, but according to lines 16-21 on page 12, the shift in wavelength is a mere 2 nanometers. Since this is much less than a half of one percent of the unshifted wavelength, the shift is considered to be less than typical uncertainties and errors in wavelength measuring equipment. While minimal wavelength shifts might be detectable by painstaking use of precision measuring devices in a scientific laboratory, this is impracticable for real life, especially given the emphasis on cheapness, speed, and simplicity of equipment. Accordingly claims 12-14 are unclear.
The applicant’s declarant, Mr Cooper responded as follows:
“…the wavelength shift referred to is merely one example of the differences between the plots of Figs. 8 and 9 as discussed in lines 14-25 of page 12.”
Claims 12-14 are clear in terms of the features defined therein. The description and related drawings (Figs. 8 and 9) show the spectral shift at specific points for the Europium Oxide dopant powder when incorporated in glass. Fig. 8 shows a plot of percent transmission against wavelength (nm) for raw Europium Oxide dopant powder. Fig. 9 shows a plot of percent transmission against wavelength (nm) for raw Europium Oxide dopant powder incorporated in a glass and ground into a fine powder. Thus the issue raised is one of practical application in terms of measuring the spectral shift. The opponent has asserted that such measurement is practically not possible. The opposed specification’s description and graphs disclose such a shift. The onus is clearly on the opponent to prove their case. They have not provided any evidence relating to the art in question (such as results of experiments, textbooks, journals, etc.) to show that measurement of a spectral shift of 2 nm is not practically possible. I do not find that claims 12-14 lack clarity in light of the spectral shift issue raised by the opponent.
Issue 7: The opponent submitted that, “Various language in the text and claims further renders the claims unclear, including ‘witch’ in claim 6, and, ‘alternation’ in claim 13.”
Mr Cooper, on behalf of the applicant stated, “…It would be desirable to amend the dependent claims of the present patent in the same way as in the granted European patent, including the correction of the typographical errors noted in paragraph 34 of Ms Henderson’s declaration.”
Claim 6 reads as follows:
“6. A method of providing a document with a covert security feature as claimed in any preceding claim, in witch the dopant is mixed with ink and the resulting mixture is applied to the document.” (my emphasis)
One of the Rules of Construction as set out by the Courts over the years (Henriksen v Tallon (1965) RPC 434) is applicable in this instance. In particular the Rule which states, “Reject the absurd.” Where a claim is capable of more than one construction, then an absurd construction should be rejected in favour of an alternative construction. For instance see Lord Russell in EMI v Lissen, (1939) 56 RPC 23:
"if possible, a specification should be construed so as not to lead to a foolish result or one which the patentee could not have contemplated"
From a reading of claim 6 I note that the word, ‘witch’ should read ‘which’. The opponent has not indicated that they were misled by use of the term ‘witch’ or that they were unable to determine the scope of claim 6 as a result. I do not find that claim 6 is lacking in clarity due to what is quite obviously a typographical error.
Claim 13 reads as follows:
“13. A method of providing a document with a covert security feature as claimed in any preceding claim, in which said visible wavelength absorption spectrum of the dopant can be shifted to a higher or lower wavelength by alternation of the composition of a glass in which it is fused.” (my emphasis).
Another of the Rules of Construction set out by the Courts over the years is that the words of a specification should generally be given their ordinary English meaning (Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461 at 478). The exception to this is that where a word or expression has a special meaning in the relevant art, then the specialised meaning should be adopted (Electric & Musical Industries Ltd v Lissen Ltd (1939) 56 RPC 23 at 41). This follows from the fact that the specification is read by a person skilled in the relevant art. This is brought out in many cases, exemplified by this quote from the decision of Lord Davey in the case of Patent Exploitation Ltd v Siemens Bros. 21 RPC 549:
"a specification like any other document should be construed by the Court according to the fair meaning of the language used after being informed by evidence of the nature of the subject-matter, the state of knowledge at the [priority] date of the patent, and the meaning of any scientific or technical terms that are in it."
Neither the applicant nor the opponent has indicated that the term ‘alternation’ has any special meaning in the art. The Macquarie Dictionary, 3rd Edition, first published 1997, reprinted 2001, provides the following definition for ‘alternation’,
·Alternate succession;
·Appearance, occurrence, or change by turns.
Thus the claim would be read as claiming an alternation of the composition so that said visible wavelength absorption spectrum of the dopant can be shifted to a higher or lower wavelength. This construction does not create any lack of clarity in the claim. Thus the claim as such is clear. I now have to determine if the specification has indicated that a special meaning is to apply (as per the Dictionary Principle (see British Thomson-Houston v Corona (supra)). A special meaning may only prevail over the plain and unambiguous meaning if the special meaning is clearly expressed. The specification has not provided any special meaning for the term ‘alternation’. I conclude that claim 13 in its current form does not lack clarity. I have to determine if the feature of ‘visible wavelength absorption spectrum of the dopant can be shifted to a higher or lower wavelength by alternation of the composition of a glass in which it is fused’ in claim 13 has fair basis in the description. The description (page 11, line 20 onwards) states:
“In many compositions, the structure and magnitude of absorption peaks can be controlled by including a substantial quantity (> 20% by weight) of a high atomic number Z element in the batch composition (lanthanum, bismuth, and strontium work well as examples). Then varying the content of this high Z element only gives changes in position and magnitude of the absorption peaks, from composition to composition. Different absorption peak wavelengths and magnitudes from that exhibited by the raw dopant before being incorporated in a glass. The effect of incorporating the dopant in a glass on its spectrum can be seen in Figs. 8, 9, 10 and 11.”
Thus the specification reveals several compositions which give changes in position and magnitude of the absorption peaks, in particular by varying both the high Z element as well as the content of an individual element when incorporated in glass, thus, in effect, varying the composition of the glass. Thus it is clearly open to the skilled addressee to select two compositions such that said visible wavelength absorption spectrum of the dopant can be shifted to a higher or lower wavelength by alternation between these compositions. I find that the matter defined in claim 13 has a real and reasonable disclosure in the specification (see Lockwood v Doric (supra)). Accordingly Claim 13 is fairly based on the description.
I note that the opponent did not raise the above matter in respect of claim 14. However I note that the same clarity/fair basis issues also potentially affect claim 14. Claim 14 states:
“14. A method of providing a document with a covert security feature as claimed in any preceding claim, in which the dopant is fused in a glass and in which said visible wavelength absorption spectrum of the dopant is alterable by alternation of the reaction temperature and or pressure at which the glass is made.” (my emphasis).
Based on the ordinary meaning of the term ‘alternation’ the claim would be read as claiming an alternation of the reaction temperature and or pressure at which the glass is made so as to alter said visible wavelength absorption spectrum of the dopant. This construction does not create any lack of clarity in the claim. Thus the claim as such is clear. I now have to determine if the specification has indicated that a special meaning is to apply (as per the Dictionary Principle in British Thomson-Houston. v Corona (supra)). As I had previously determined, the specification has not provided any special meaning for the term ‘alternation’. I conclude that claim 14 in its current form does not lack clarity. I have to determine if the feature of ‘visible wavelength absorption spectrum of the dopant is alterable by alternation of the reaction temperature and or pressure at which the glass is made’ in claim 14 has support (fair basis) in the description. The description provides the following related material:
·“…the most useful compounds (those with the most distinctive absorption spectra in the visible) are formed by fusion melting. Silicates, phosphates, borates have been found to be the most useful starting points for fusion because they give transparent glass matrices.” (page 10, lines 12 to 15)
·“…the best compositions are obtained where phase separation of the melt temperature is imminent. This point is determined experimentally for each composition.” (page 11, lines 3 to 6)
·“In many compositions, the structure and magnitude of the absorption peaks can be controlled over a wide range by control of the gas atmosphere during the melt phase. This is established by trial and error for each composition by test melting each composition in air, in a reducing atmosphere, and in an oxidising atmosphere to determine the optimum methodology and conditions for the absorption profile required.” (page 11, lines 11 to 18)
The description provides support for control of the structure and magnitude of the absorption peaks of compositions over a wide range by control of the gas atmosphere during the melt phase. Thus the visible wavelength absorption spectrum of the dopant is alterable by control of the gas atmosphere (and thus the pressure and temperature at which the glass is made) during the melt phase. Thus the feature of “alternation of the reaction temperature and or pressure…” has a real and reasonable disclosure in the specification. I find that the matter defined in claim 14 has a real and reasonable disclosure in the specification (see Lockwood v Doric (supra)). Accordingly Claim 14 is fairly based on the description.
On due consideration of all matters raised by the opponent regarding clarity and fair basis of the claims, I have found that the opponent has been unable to show that the claims lack clarity and are not fairly based.
Novelty
The opponent alleged lack of novelty on the basis of ten documents which were filed as exhibits (WH-1 to 10) to the declaration of Ms Wendy Henderson. The applicant’s declarants provided submissions in rebuttal and I shall address submissions from both parties wherever relevant.
The reverse infringement test from Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1976) 137 CLR 228 at 235 sets out the basic test for anticipation or want of novelty:
"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement."
It follows from the reverse infringement test that if a citation discloses all the features of the claim, the claim will lack novelty. If the citation does not disclose all the features of the claim, the claim will still lack novelty provided the citation discloses all the essential features of the claim; but if the essential features are not disclosed in the citation, the claim is novel (Nicaro Holdings v Martin Engineering 16 IPR 545 and Catnic Components Ltd v Hill and Smith Ltd (1982) RPC 183).
Both parties did not show that any of the features of claim 1 were inessential to the working of the invention. I shall, therefore, begin by assuming that all features of the independent claim are essential (Catnic Components Ltd v Hill and Smith Ltd (1982) RPC 183):
1. A method of providing a document with a covert security feature in which
2. The document is provided with at least one inorganic dopant,
3. The dopant being of a material which can be identified by examination of its visible wavelength absorption spectrum, measured either in reflective or transmissive mode, in response to broad-band visible wavelength photon radiation,
4. In which the dopant is fused with other elements and micronised into a fine powder before being applied to or otherwise incorporated into the document,
5. Thereby altering said visible wavelength absorption spectrum of the dopant,
6. And in which the dopant exhibits no UV, visible or IR stimulated output.
The opponent has cited ten documents of which six are patent specifications and four relate to presentations, a purchase order and a conformation letter. I shall commence by assessing the patent specifications for novelty considerations. Out of six patent specifications, I found two which were not sufficiently close to the opposed invention to be of relevance. The first (WH-4), related to subjecting a material to a beam of laser radiation to create localised stresses within the material, wherein the stresses were capable of detection by polarised light. The second (WH-6) disclosed a coated substrate containing the information to be protected wherein, the coating becomes transparent when heated. Thus neither discloses a security feature which reflects or transmits visible light while absorbing certain frequencies and they will not be considered for the purposes of novelty or inventive step. The remaining four patent specifications (WH-1 to 3, 5) and four documents (WH-7 to 10) have been addressed below.
US 4,442,170 (exhibit WH-1)
The opponent submitted that claim 1 at least lacked novelty in light of this document and that claims 5, 8 and 9 lacked novelty in light of specific disclosures from the citation. The opponent listed the following disclosures for claim 1:
·“Security document (or “security paper”) with security features in the form of luminescing substances” (title, abstract and first paragraph of column 1)
·Europium-activated Yttrium oxysulphide is calcined, and ground to a fine powder (i.e. ‘micronised’) to form a security pigment suitable for mixing into a printing ink (from examples 1 and 2 in column 5).
·The addition of dopants to standard offset litho printing inks is known to those skilled in the art (per lines 1-3 of page 9 of the opposed application)
·The pigment of examples 1 and 2 in US 4442170 shows no luminescence in response to UV excitation, but responds at a wavelength of 630 nanometers to photonic excitation of the same wavelength. According to “Chambers Science and Technology Dictionary” (1991edition), visible light has a wavelength range of 780-380 nanometers.
The opponent concluded that US 4442170 thus discloses a security pigment based on an inorganic compound of Europium having a visible response to visible-wavelength photon radiation.
John Cooper (applicant’s declarant) quoted from their response to the European Patent Office:
“D1 (the citation) repeatedly states that it deals with quasiresonant luminescent dopants which emit visible radiation in narrow wavelength ranges close to the wavelengths of the applied excitation light. The title itself refers to an “authenticity mark of luminescent material”. It is noted that Example 1 of D1 refers to materials being “calcined” (i.e. heated to a high temperature without fusing) and then micronised. Where the dopants are incorporated in glass, glass fibres or the like are incorporated into the documents; the dopants are not fused with other materials and then micronised as required by the present claim 1. It is clear that the processes and products disclosed by D1 are entirely different from those of the present invention.’
US 4442170 discloses a security paper with luminescing authenticity features which is characterised in that at least a part of the luminescing features can be excited exclusively in a narrow wavelength region and also emit in this same or closely neighbouring wavelength region. The document further discloses that, the luminescing substances used in the security paper make use of an effect which is very similar to the resonance fluorescence of gases and that “Resonance fluorescence is the phenomenon known in the case of the luminescence of gases that excitation and emission take place at the same point in the spectrum.” Examples 1 and 2 disclose Europium-activated yttrium oxysulphide as a luminescing substance of the invention, which showed under UV-irradiation a red luminescence at 630 nm. It is disclosed in the form of a colourless powder with an average particle size of 0.5 µm.
Looking at claim 1 of the opposed application I note that features 3, 5 and 6 as set out above have not been disclosed. In particular the substance in US 4442170 cannot be identified by ‘examination of its visible wavelength absorption spectrum, measured either in reflective or transmissive mode, in response to broad-band visible wavelength photon radiation.’ (my emphasis). The invention of the citation clearly has luminescent properties which as the citation shows is an active response to external electromagnetic wave stimulation. The invention under attack does not provide such a response. It merely absorbs specific wavelengths of the incident radiation (only in the visible wavelength range) and this is detected through the radiation that it either transmits or reflects. At no stage does it actually emit radiation in response to the external stimulation. I do not find that claim 1 of the opposed application lacks novelty in light of US 4442170. Further as claims 5, 8 and 9 of the opposed application are appended either directly or indirectly to claim 1, they are also not lacking in novelty in light of US 4442170.
GB 2035208 A (exhibit WH-2)
The opponent submitted that the disclosure of this document rendered claim 1 (at least) of the opposed application as lacking in novelty. The applicant was of the view that the invention disclosed in this document was entirely different from the invention presently claimed in claim 1.
GB 2035208 discloses a printed security (banknote) with a hallmark in the form of a coating applied in a vacuum to the surface of the security. The coating can be given a variety of properties, such as:
·Fluorescent properties (e.g. fluorescent emission excited by light with a wavelength less than 400 nm)
·Ultra-violet light absorbing properties.
·Electrically conducting properties
Comparing this with claim 1 of the opposed application there is no disclosure of the non-fluorescent nature of the coating. The opposed invention uses materials which merely absorb specific wavelengths of incident visible wavelength radiation (external stimulation) and this absorption is detected through the transmission or reflection of the incident radiation. At no stage does it actually emit radiation in response to external stimulation. There is no disclosure of electrically conducting or Ultra-violet light absorbing properties. I do not find that the claims of the opposed invention lack novelty in light of GB 2035208.
EP 0202902 A1 (exhibit WH-3)
This document discloses an article having a marking applied to a selected surface area of the article, said marking being composed of a vitrifiable material which is indistinguishable from the surface of the article when viewed in visible light but which fluoresces when subjected to ultra-violet light. There is no disclosure of a non-fluorescent material that absorbs specific wavelengths of incident visible wavelength radiation (external stimulation), wherein the absorption is detectable through the transmission or reflection of incident radiation from the material. I do not find that the claims of the opposed application lack novelty in light of EP 0202902.
WO 94/16902 A1 (exhibit WH-5)
This relates to a method of labelling an object for identification by application of a mark which is visible to the naked eye and a mark which is invisible to the naked eye. The visible mark is one or more of an ink pattern, a picture, or a hologram. The invisible mark is one or more of an ultraviolet radiation (UV) dye which is visible only in the presence of selected ultraviolet radiation, an infrared radiation (IR) dye which is visible only in the presence of selected infrared radiation, an ink which displays a selected measurable electrical resistivity, or a biologic marker.
There is no disclosure of a security feature which can be identified by examination of its visible wavelength absorption spectrum, measured either in reflective or transmissive mode, in response to broad-band visible wavelength photon radiation, and in which the security feature exhibits no UV, visible or IR stimulated output. Thus WO 94/16902 does not render the opposed invention as not novel.
Exhibits WH-7 to 10
I shall now consider the remaining four documents relating to presentations, a purchase order and a conformation letter. Wendy Henderson, the opponent’s declarant, submitted that the presentations (exhibits WH-7, 10) were made to members of a commercial organisation entitled “Task Force A” and to “Seagram PLC” on 15 July 1997 and 3 November 1997 respectively. The opponent stated that in both cases:
·The presentation was not subject to conditions of confidence, and accordingly the information disclosed to the audience during presentation is in the public domain.
·A handout was distributed to members of the audience, and no conditions of confidentiality were applied to these distributed summaries.
Alan Fortune, for the opponent, indicated the following occurrences:
·Initial presentations were made to the Bank of England and De la Rue on using glass as a fine powder in security document printing.
·He gave a presentation to the Bank of England to include covert products that responded in the IR spectrum which led to the signing of an exclusivity agreement.
Wendy Henderson also made submissions on the content of the presentation, but I shall deal with that (if necessary) after determining if this disclosure was available to the public before the earliest priority date of the opposed patent application.
Dr Spowart, the applicant, stated that he was not involved in the preparation or presentation of the materials and had not seen them prior to their inclusion in the observations first submitted to the European Patent Office by the opponent. He also made the following statements:
·I have no knowledge as to if or when they may have been disclosed to any other parties, whether in confidence or otherwise. Given the nature of the technology it would be extremely surprising if no conditions of confidentiality had attached to their disclosure. The opponent has provided no evidence that the information in these materials was ever placed in the public domain.
·Wendy Henderson has given no indication of the source of her supposed knowledge regarding the dates of such disclosures, the manner of distribution of the materials or any conditions attaching thereto. I have no reason to believe that she is in any better position to attest to the public disclosure of these materials than I am.
·I note that Alan Fortune, who was presumably involved personally in the preparation and any presentation of these materials, has himself made no declaration to this effect, nor has he made any personal declaration regarding the supposed further presentations referred to in paragraph 20 of Ms Henderson’s declaration.
Ms Henderson has made certain assertions regarding presentation of “The SpectraLesen Security System for Bank Notes” (WH-7) and “The SpectraLesen Security System for Commercial Product Authentication” (WH-10). However this does not seem to be supported by statements made by Alan Fortune (a director of Quantum Glass Limited). There is no indication by Mr Fortune of any knowledge of the presentations made to “Task Force A” and to “Seagram PLC”. He has indicated that he made presentations to the Bank of England and De la Rue, but at no stage has he indicated that these disclosures were non-confidential and/or open to the public at large. I do not consider that sufficient evidence has been provided to establish the public disclosure of the documents in question prior to the earliest priority date of the opposed patent application. There is no support from Alan Fortune, a director of Quantum Glass Limited, nor is there any supporting evidence, such as declarations from the parties who allegedly attended the presentations.
I do not find that documents WH-7, WH-10 were published before the earliest priority date (6 November 1998) of the opposed application, consequently I shall not consider them for the grounds of novelty or inventive step.
Exhibits WH-8, 9 relate to:-
1. Confirmation of supply of equipment for reading printed ink spectra, and
2. A purchase order raised by the Bank of England Printing Works to Quantum Glass Limited requesting that they build and supply a detector in accordance with a specification agreed to between the parties.
The equipment supply letter provides no disclosure of the dopant material and its behaviour when subjected to broad-band visible wavelength photon radiation. I do not consider that supply of equipment for reading printed ink spectra constitutes a disclosure of the opposed invention. The purchase order does not disclose the features of the detector and makes reference to a “Draft of the Heads of Agreement” between the parties. Clearly there is no indication that all this was known to members of the public or that, parties other than Quantum Glass Limited and the Bank of England had this information available to use at their discretion. I do not consider that this document in any way attacks the novelty of the opposed application.
I conclude that none of the citations raised have in any way rendered the claims of the opposed application as lacking in novelty.
Inventive Step
The statement of grounds and particulars identifies ten documents, eight of which are raised as citations to show lack of inventive step. None of the submissions from the opponent make reference to the state of the common general knowledge in the art in Australia. They have asserted lack of inventive step on the basis of the cited documents on an individual basis and in one instance referred to a combination of documents.
The applicant’s declarants have refuted assertions of lack of inventive step on the basis that the cited documents do not disclose the combination of features claimed. In particular the applicant refers to; the absorption spectra of the security features in the visible wavelength range, and that this is through only reflection/transmission of incident light in the visible wavelength range.
Subsections 7(2) and 7(3) of the Patents Act 1990 indicate that a claimed invention will lack an inventive step if it is obvious to a person skilled in the relevant art in the light of:
(a) common general knowledge in the art; or
(b) common general knowledge considered together with information publicly available in a single document or through doing a single act, provided that the document or act could reasonably be expected to have been ascertained, understood and regarded as relevant to work in the relevant art in the patent area by the person skilled in the art.
Aickin J set out the following test for obviousness in Wellcome Foundation Limited v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at page 286:
"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."
Application of this test in light of Subsections 7(2) and 7(3) of the Patents Act 1990, would require:
· a determination of the problem sought to be solved by the opposed patent specification
· a determination of the non-inventive worker in the field (or the person of ordinary skill in the relevant art) in Australia
· a determination of the common general knowledge in Australia at the priority date (6 November 1998)
The problem of the prior art identified in the opposed specification relates to providing improved security features of a covert nature for documents such as banknotes, cheques and drafts, bond and stock certificates, and credit and bank cards. The specification states:
“…the traditional forms of security have become increasingly easy to circumvent. This is because the absorption and emission in the visible, NIR and IR ranges of all the currently used and proposed security dopants are readily available in the public domain since the current materials were developed for the laser and lamp industries. There is accordingly a requirement for improved forms of both covert and overt security features, preferably ones which can be used with existing printing technology at modest cost.”
The hypothetical non-inventive skilled worker in the field would be a team consisting of a physicist with expertise in reading/detecting spectra of dopants as security features and a chemist who had expertise in glass melting technology and synthesising dopants as security features.
The common general knowledge (henceforth referred to as cgk) relevant to the question of obviousness was described by Aickin J. in Minnesota Mining& Manufacturing Co v Beiersdorf (Australia) Limited, (1980) 144 CLR 253 at 292 as:
"The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge."
In order to determine the cgk in Australia I shall have regard to the submissions of the various declarants in this matter. I shall also have to consider their experience in the relevant art in Australia and whether that would provide them with the relevant cgk. None of the declarants have indicated if they have any experience in the relevant art in Australia, either through having worked in Australia or visited for study or research/industrial purposes in the relevant field prior to the relevant priority date. Thus they will be unable to comment on what constitutes the cgk in Australia in the field of the opposed invention at its priority date. However I note that Dr Spowart is the inventor and applicant of the opposed application. Quite clearly he is not the ordinary non-inventive skilled worker in the field. I do not consider that he could determine what would be the cgk available to the non-inventive skilled worker in the art in Australia. However I believe that Dr Spowart could provide technical information to explain various aspects of the prior art and the opposed invention.
The opponent’s declarant, Wendy Henderson asserted that the following constituted cgk in Australia:
1. The addition of dopants to standard offset litho printing inks is known to those skilled in the art (per lines 1-3 on page 9 of the opposed application).
2. It is known for transparent glasses to be formed from silicates, phosphates, and borates (see lines 24-26 on page 10 of the opposed application).
3. The effect of mixing of powders of various particle sizes into printing inks.
The applicant did not challenge these assertions and as these have been disclosed as known in the art I shall consider them to form part of the cgk in Australia at the relevant priority date. There is nothing in the cgk which leads towards security features with absorption spectra which lie in the visible light range. I consider that the common general knowledge on its own would not have led the skilled addressee when faced with the problem from the prior art, to the invention. The opponent has not asserted that the cited documents constituted part of the cgk in Australia but has raised lack of inventive step in light of several of these. I shall now determine if the teaching of the documents raised by the opponent, in combination with the cgk in Australia, would render the opposed invention as lacking an inventive step. Before I proceed to do this I have to establish if the listed documents would have been ascertained understood and regarded as relevant by the non-inventive skilled worker in the art. The relevant documents for this consideration are exhibits WH-1 to WH-6. I had found that exhibits WH-7 to 10 had not been shown as being made available publicly before the relevant priority date. The opponent had also submitted that US 4442170 when combined with either of WH-7, 10 rendered the claimed invention as lacking an inventive step. The publication dates of WH-7 and 10 have not been established as coming before the priority date of the opposed application. Consequently one cannot combine the teaching of these documents with that of US 4442170 in order to establish lack of inventive step. Documents WH-1 to 6 relate to the art of the opposed application and I consider that documents WH-1 to 3, 5 would have been ascertained, understood and regarded as relevant by the skilled worker. Under the heading of novelty I had indicated that WH-4 and 6 were not sufficiently close to the opposed invention to be of relevance and hence would not be considered for both novelty and inventive step. I shall now assess lack of inventive step of the opposed invention against the remaining documents when combined with the cgk.
The key aspect of the opposed invention is the security feature wherein, when it is subjected to electromagnetic radiation in the visible range (light from a 4 watt lamp, for example), it absorbs specific wavelengths of the incident radiation (only in the visible wavelength range) and this is detected through the radiation that it either transmits or reflects. At no stage does it actually emit radiation in response to the external stimulation. I note that there is also a claim to a composition that behaves in this manner.
Thus, when facing the problem of the prior art and having regard to the teaching of the citations (when combined with the cgk), there are no directions or indications in the citations (suggesting an advantage to be gained or some substantial disadvantage avoided) that would lead the skilled addressee to the opposed invention where the security feature provides a reflective/transmissive response (with spectral absorption) to an external visible light stimulation. I note that most of the citations teach of a luminescent response to an external electromagnetic stimulation. I do not find that the claims of the opposed invention lack an inventive step in light of US 4442170,
GB 2035208, EP 0202902, and WO 94/16902 when combined with the common general knowledge in Australia at the priority date.CONCLUSION
The opponent pursued the grounds of entitlement, novelty, inventive step and section 40/fair basis. The opponent has been unsuccessful on all grounds.
I direct that the application be sealed after twenty-eight (28) days from the date of this decision. If the Commissioner of Patents is served with a notice of appeal from this decision before that time, I direct that sealing not occur until the appeal has been decided or discontinued.
COSTS
The opponent did not make submissions on costs in the statement of grounds and particulars and chose not to be present at the hearing; neither did they file any written submissions.
The applicant submitted that costs should be awarded against the opponent and should follow the event.
The power of the Commissioner to award costs is based on section 210 and regulation 22.8. The opponent has been unsuccessful on all the grounds of opposition, including entitlement, novelty, inventive step and section40/fair basis. Accordingly I award costs against the opponent Quantum Glass Limited and in favour of the applicant Alexander Rollo Spowart.
Jacob Elijah
Delegate of the Commissioner of PatentsPatent attorneys for the applicant : Wray & Associates, Perth
Patent attorneys for the opponent : Davies Collison Cave, Melbourne
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