CCL Secure Pty Ltd (formerly Innovia Security Pty Ltd) v De La Rue International Limited - [2019] APO 43

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
CCL Secure Pty Ltd (formerly Innovia Security Pty Ltd) v De La Rue International Limited [2019] APO 43

Patent Application: 2011222723

Title:Moire magnification device

Patent Applicant:                   De La Rue International Limited
Opponent:  CCL Secure Pty Ltd (formerly Innovia Security Pty Ltd)
Delegate:  Xavier Gisz
Decision Date:  23 September 2019
Hearing Date:  Written submissions filed on 30 May 2019, 13 June 2019 and 20 June 2019

Catchwords: PATENTS - section 59 opposition to grant of a patent – reference to information under Regulation 5.23 deemed unnecessary – grounds of novelty, inventive step, utility, fair basis – claims 1-22 lack utility – opposition to other grounds unsuccessful – costs awarded

Representation: Patent attorney for the applicant: Davies Collison Cave Pty Ltd
Patent attorney for the opponent: Allens Patent & Trade Mark Attorneys

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2011222723

Title:Moire magnification device

Patent Applicant: De La Rue International Limited
Date of Decision: 23 September 2019
DECISION
Claims 1-22 lack utility. Claims 1-22 are novel, inventive, and fairly based.
The Applicant is given 2 months from the date of this decision to propose suitable amendments to overcome this finding of lack of utility.
Costs are awarded against the Applicant.
REASONS FOR DECISION
Background

The matter relates to patent application 2011222723 (the Application) in the name of De La Rue International Limited (the Applicant). The Application is a national phase of international application PCT/GB2011/050407 published as WO 2011/107791. The Application claims a priority date of 01 March 2010.
The Application was advertised as accepted on 18 June 2015. A notice of opposition to grant was filed on 18 September 2015 by CCL Secure Pty Ltd (formerly Innovia Security Pty Ltd) (the Opponent). The statement of grounds and particulars (the SGP) was filed on 18 December 2015.
The evidence in support was completed on 18 March 2016. The evidence in answer was completed on 21 June 2016. The evidence in reply was completed on 19 August 2016.
On 26 September 2016, the Applicant filed a request to amend the specification under section 104. The allowance of the amendment was not opposed and the amendment was subsequently allowed on 17 February 2017.
On 30 May 2019 the Opponent requested that the Commissioner consider information relevant to the hearing under Regulation 5.23. On the 7 June 2019 the Delegate asked the Opponent to provide more information regarding the relevance of the information filed on 30 May 2019. The Opponent provided the requested information on 14 June 2019. In the letter of 7 June 2019 the Delegate stated that Hearing Officer would make a decision about whether he would rely on the information under Regulation 5.23.
The opposition was set for hearing on the basis of written submissions. The Opponent filed their submissions on 30 May 2019. The Applicant filed their submissions on 14 June 2019. The Opponent filed their reply submissions on 20 June 2019.
Regulation 5.23
On 30 May 2019 the Opponent requested the Commissioner consider under Regulation 5.23 a declaration by Karlo Jolic and an excerpt from the book “Handbook of Print Media” by Helmut Kipphan. The information relates to screened pattern printing.
I note that the screened pattern printing was in the claims as accepted (although only in a dependent claim). The feature of screened pattern printing was incorporated into the independent claim by amendment after the evidence stages of the opposition were complete. This provides an explanation as to why the information was not provided earlier.
The additional information provided by the Opponent gives an overview of screened pattern printing and reinforces the Opponent’s view that screened pattern printing was common general knowledge at the priority date.
I do not consider the information to be likely determinative of the opposition. The evidence already establishes that screened pattern printing was well known at the priority date.
On balance, I am not satisfied that the information provided by the Opponent should be relied upon under Regulation 5.23.
APPLICABLE LAW
On 15 April 2013, the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 commenced which resulted in significant amendments to the Patents Act 1990 and Patents Regulations 1991 affecting, inter alia, the standard of proof required for an opposition to succeed. However, for patent applications having a request for examination filed before the commencement date of 15 April 2013, the standard of proof remains the one that was in force prior to that commencement date. According to this standard of proof, it must be established that it is practically certain (or, in other words, the Commissioner should be clearly satisfied) that the patent if granted would be invalid (Genetics Institute Inc v Kirin-Amgen Inc [1999] FCA 742, at [17]; Commissioner of Patents v Sherman [2008] FCAFC 182, at [18]; F.Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283, at [66-67]).
The request for examination with respect to the Application was filed on 18 March 2013, therefore the above mentioned standard of proof applies. In addition, the filing date of the request for examination being before 15 April 2013 also means that the Application was examined under the Act and Regulations as in force before the amended provisions of the Raising the Bar Act and the same are also applicable to the present opposition proceedings.
It is well settled that the Opponent has the onus of establishing the facts supporting the grounds of opposition.
Evidence
Evidence in support
The evidence in support comprises a declaration of Karlo Jolic made on 18 March 2016, together with Exhibits KJ1 to KJ15 (Jolic #1).
Evidence in answer
The evidence in answer comprises: a declaration of Richard Jotcham made on 20 June 2016, together with Exhibits RBJl to RBJ6 (Jotcham); and a declaration of Nikhil Ramchand made on 21 June 2016, together with Exhibits NNRl and NNR2 (Ramchand).
Evidence in reply
The evidence in reply comprises a declaration of Karlo Jolic made on 3 August 2016, together with Exhibits KJ16 to KJ19 (Jolic #2).
Grounds of Opposition
The grounds of opposition relied on by the Opponent are as follows:
(a) lack of novelty based on D1 (WO 2006/125224),
(b) lack of inventive step based on common general knowledge alone or on common general knowledge and D1 (WO 2006/125224),
(c) lack of utility, and
(d) lack of fair basis
The invention
The field of invention relates to a moiré magnification device for use on security documents. The invention is summarised at the top of page 4:
"…rather than attempting to provide the two microimage components of the unit cell in different colours in a single printing operation or the like, we provide at least one and possibly both microimage components in such a way that they have colour density (where "colour" includes black) which enables the further coloured layer to be viewed therethrough so that the resultant magnified microimage components appear as a result of combining the colours of the further coloured layer and the second microimage components and possibly the first (depending on whether or not it was opaque)..."
The colour density variation is achieved by printing one or both of the microimages in the form of a screened pattern such as a halftone printing.
The invention is best illustrated in Figure 8:
Although Figure 8 only shows the first microimage array, a second microimage array (printed with the first microimage array in a single process) would look essentially the same as the first in a cross-sectional view.
The screened pattern of the second microimages is illustrated in Figure 6 and Figure 7:
The description as amended post acceptance states at page 14 lines 5 to 23:
“Figure 6 shows a microimage unit cell 100 consisting in the example of a solid inked or opaque K followed by a screened (and thus semi-translucent) 5 - this screening may take the form of a linear screen as shown in Figure 6 or a half tone screen as shown in the unit cell 100' of Figure 7 or any variation in between. A cross-sectional view of this device is shown in Figure 8. Illustrating a transparent plastic substrate 250 on one surface of which is provided a microlens array 252 and on the other surface a print receptive layer 251 is provided on which is provided the microimage array (layer 1) 254. The print receptive layer 251 can also function as a focal adjustment layer.
Following the application of the first printed array 254 the same side of the device is then over coated with a second colour 256 with the effect that the magnified synthetic image of the 5 has a colour which is the superposition of the first and second colours. For example suppose the first colour used to print the K5 unit cells 100 was blue and then the second colour applied as a uniform coating 256 was yellow then it follows that in the synthetically magnified image 20 array the K's will appear in blue (since the K was printed with a substantially opaque colour) and the 5's will appear in a shade of green, the hue of which will depend on the relative weighting of blue and yellow present in the 5's – as shown in Figure 9.”
It is notable that the halftone effect is only possible if the microlenses are small enough that they are not individually discernible. For example, take the following lens array:
If the underlying microimages were a screened pattern comprising an alternating array of blue and yellow and the lenses were 4mm in diameter the moiré magnified image would appear like this:
If the microlenses were approximately 700µm in diameter the moiré magnified image would appear like this:
If the microlenses were approximately 350µm in diameter the moiré magnified image would appear like this:
If the microlenses were approximately 170µm in diameter the moiré magnified image would appear like this:
Whether the two colours displayed in the microlenses appear as a single halftone blended colour of the two colours (the printing and background colours) depends on several factors including: a) the size of the microlenses, b) the distance between the device and the viewer c) the contrast between the colours of printing and background (two similar colours would form a halftone blended colour more readily than two dissimilar colours).
The parameters of the microimages and microlenses (i.e. the microlens and microimage diameter and printing resolution) must be carefully chosen such that the moiré magnified image shows both a halftone effect and the moiré magnified image as a distinct image. For example, a microimage made of a 5x5 array of pixels (of contrasting colours) would likely not be able to fulfil both of these criteria; if the moiré magnified image was large enough to be discerned as a distinct image then the halftone effect would not be achieved, whereas if the halftone effect was achieved then the moiré magnified image would not be large enough to be discerned as a distinct image.
Claims
The specification ends with 22 claims comprising: 1 independent claim and 21 dependent claims. The independent claim 1 is reproduced below:
A moiré magnification device comprising a transparent substrate carrying:
i)a regular array of micro-focusing elements on a first surface, the focusing elements comprising microlenses and defining a focal plane;
ii)a corresponding array of microimage element unit cells located in a plane substantially coincident with the focal plane of the focusing elements, each unit cell comprising at least two microimage components;
wherein the pitches of the micro-focusing elements and the array of microimage element unit cells and their relative locations are such that the array of micro-focusing elements cooperates with the array of microimage element unit cells to generate magnified versions of the microimage components due to the moiré effect,
wherein first microimage components of the unit cells have a colour density different to the colour density of the other, second microimage components, and wherein the second microimage components are formed as a screened pattern, and wherein a further coloured layer is provided on or extending over the array of microimage element unit cells such that when the device is viewed, at least the second microimage components appear in a colour dependent at least partly on the further coloured layer and which is different from the colour of the first microimage components.
The features of the claim may be conveniently divided into the following integers:
(a)       A moiré magnification device comprising a transparent substrate carrying:
(b)       a regular array of micro-focusing elements on a first surface, the focusing elements comprising microlenses and defining a focal plane;
(c)       a corresponding array of microimage elements unit cells located in a plane substantially coincident with the focal plane of the focusing elements, each unit cell comprising at least two microimage components;
(d)      wherein the pitches of the micro-focusing elements and the array of microimage element unit cells and their relative locations are such that the array of micro-focusing elements cooperates with the array of microimage element unit cells to generate magnified versions of the microimage components due to the moiré effect;
(e)        wherein first microimage components of the unit cells have a colour density different to the colour density of the other, second microimage components,
(f)        and wherein the second microimage components are formed as a screened pattern,
(g)        and wherein a further coloured layer is provided on or extending over the array of microimage element unit cells such that when the device is viewed, at least the second microimage components appear in a colour dependent at least partly on the further coloured layer and which is different from the colour of the first microimage components.
Claim Construction
Screened pattern
A screened pattern is a printing technique that uses discrete shapes, varying either in size or in spacing, to vary the colour density. The discrete shapes are typically dots. For convenience, I will refer to the discrete shapes as dots for the rest of this decision. This printing technique relies on an optical illusion: when the dots are small enough that they cannot be individually discerned, the dots and the background behind the dots blend together to make a colour that is a combination of the dots and the background.
Figure 6 uses lines as the screened pattern on the number ‘5’ while Figure 7 uses dots as the screened pattern on the number ‘5’. It is not immediately clear from figures 6 and 7 whether the lines and dots are used representationally to illustrate the different types of screened patterns which would not be apparent to the casual observer, or if the lines and dots on the ‘5’ are what the casual observer would actually see.
The corresponding description states at page 14 lines 5-13:
“Figure 6 shows a microimage unit cell 100 consisting in the example of a solid inked or opaque K followed by a screened (and thus semi-translucent) 5 - this screening may take the form of a linear screen as shown in Figure 6 or a half tone screen as shown in the unit cell 100' of Figure 7 or any variation in between. A cross-sectional view of this device is shown in Figure 8. Illustrating a transparent plastic substrate 250 on one surface of which is provided a microlens array 252 and on the other surface a print receptive layer 251 is provided on which is provided the microimage array (layer 1) 254. The print receptive layer 251 can also function as a focal adjustment layer.”
The words ‘semi-translucent’ make clear that the lines and dots screened patterns in figures 6 and 7 would not be visible to the casual observer, and instead blend together to change the colour density.
This blending of colour by the screened pattern is made clear in claim 1 which states: “…the second microimage components appear in a colour dependent at least partly on the further coloured layer…”. A pattern of dots where the individual dots are visible to the viewer (in the moiré magnified image) is not considered a screened pattern defined in claim 1 since the colours of the dots and background are not blended together into a single colour.
Micro-focusing elements
The description states at page 7 lines 30 to 33:
“The diameters of the microlenses 22 is typically in the range 1-100 microns, preferably 1-50 microns and even more preferably 10-30 microns, thus defining pitches in a similar range.”
The description states at page 6 lines 30 to 33:
“Thicker versions of the security device (up to 300μm) could be employed in applications which include passport paper pages, plastic passport covers, visas, identity cards, brand identification labels, anti-tamper labels--any visually authenticable items.”
Dr Jolic states in Jolic#1 at paragraph 44:
“…I would typically use a spherical lens having a diameter around 50μm. The focal lengths of such lenses, which affect the thickness of the device, would be around 100 microns…”
I consider this relationship to be generally applicable to moiré magnification devices, thus the lens diameter is 50% of the device thickness. The above examples give a range of dimensions of the micro-focusing elements from 1‑150 μm, however I do not consider that the claims to be limited to this range. Instead, the term ‘micro-focusing elements’ is given its plain meaning, i.e. having dimensions measured in micrometers (rather than nanometers or millimetres), that is, in the range of 1-999µm.
Novelty legal principles
A claimed invention is deprived of novelty if it has been given to the public before the priority date, either by prior use of a product or process, or by publication of information that equates to the claimed invention (Justice Bennett in Danisco A/S v Novozymes A/S (No 2) [2011] FCA 282 at [248]; (2011) 91 IPR 209 at [248]). It is well established that the general test for anticipation is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20]; (1977) 137 CLR 228 at 235:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement.”
This test is satisfied if the alleged anticipation discloses all of the essential features of the invention as claimed (Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40 at [19]; (1990) 16 IPR 545 at 549). To meet this requirement, the prior art must contain “clear and unmistakable directions” to the claimed invention (Pfizer Overseas Pharmaceuticals v Eli Lilly and Co [2005] FCAFC 224 at [314]; (2006) 68 IPR 1 at 67 [314]). However, if the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee’s claim, but would be at least as likely to be carried out in such a way that would not do so, the patentee’s claim will not be anticipated (General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd (1971) 1A IPR 121 at 138). Where a prior publication does not explicitly disclose all of the integers of the claimed invention, it would still deprive the claimed invention of novelty if (i) the skilled reader understands the disclosures of the prior publication to include a missing integer, and (ii) if the document contains a direction to use a process that inevitably or inexorably results in something within the claim (Justice Bennett in Danisco (No 2) [2011] FCA 282 at [248]; (2011) 91 IPR 209 at [248]).
Novelty
The Opponent argues that the claimed invention lacks novelty in light of D1: WO 2006/125224.
D1: WO 2006/125224
Embodiment 1

The Opponent states in their submissions at paragraphs 81-85:
“With reference to Figures 16a-f (reproduced below), there is provided two cross sectional diagrams of six exemplary image icons and plan views of each. A dyed or pigmented coating layer 323 extends over the microimage elements (icon elements). It is explicitly stated at page 60 that:
"By suitably limiting the overall dye or pigment density of the fill 323, thickness variations of the dyed or pigmented fill 323 create a tonal, or greyscale, optical density variations presented in the plane view 337. An array of icon elements of this type can be synthetically magnified within the present material system to produce images that show equivalent greyscale variations."
With reference to the figures above, if icon element 339 and its construction is repeated in an image array of a moire device, the hair and the outline of the face could be the "first microimage components", and the skin of the man's face could be "the second microimage components".
The same applies for the other image icons illustrated above. It is clear that the hair and the outline of the face is of a darker colour than the face of the person, thus, disclosing the claim feature (e) "first microimage components of the unit cells have a colour density different to the colour density of the other, second microimage components."
Feature (g) of claim 1 is also clearly disclosed, because D1 teaches that the fill layer 323 causes a tonal, greyscale or optical density variation in the moire magnified images due to its thickness variations.
D1 discloses that icon elements can be formed by various methods (page 51). It is explicitly stated that:
"…Any of the multitude of common printing methods…letterpress, flexo, gravure, and intaglio, can be used to deposit icon elements 108 of this kind so long as the print resolution is fine enough".
As explained previously, if the printing technique used is one that requires a print master, namely, flexo, gravure, intaglio, then the image created will always be a 'screened pattern' due to the inherent nature of such printing techniques. As such, feature (f) is inherently disclosed.”
Embodiment 2
The Opponent states in their submissions at paragraphs 88-92:
“Figures 37 (a) to (c) of D1 show alternative embodiments of the microimage elements of a moire magnification device. Specifically, what is shown is an array of positive and negative microimage elements overprinted with a coloured coating.
At page 100, it is stated that:
"…For example: one common difference between the appearance of a filled positive icon element and the background surrounding it is color. If icon fill material 878 bears a pigment, dye, or other coloring material, then the filled positive icon element 886 will show a high concentration 893 of the icon fill material 886, while the surrounding background area 884 will not. In a similar manner, the background of filled negative icon elements 892 will show a high concentration of the icon fill material 886, while the object patterns of filled negative icon elements 892 will show a deficiency 894 of the icon fill material….when used as elements of a moire magnification system, these positive and negative image icon elements can be employed to produce positive and negative synthetic images. Positive and negative image elements can be used singly or in combination"
The paragraph above clearly discloses that additive colouring effects can be achieved by choosing suitable colours for the image elements and the icon fill material 878.
As such, Figure 37 and its description also discloses 'a further colour layer' as required by claim 1 of the Opposed Application, which extends over the array of microimage element unit cells to cause some of the microimage elements to appear in a different colour. As the device is viewed, as illustrated in Figure 37(c), the second microimage components 892 appear in a colour dependent at least partly on the coloured layer 878, which is different from the colour of the first microimage components 890.
Similarly, Figures 38 (a)-(c) and its corresponding description at page 102-105 also disclose features of claim 1.”
Embodiment 3
Although not identified in the Opponent’s submissions, I consider the embodiment shown in figure 40 to be good illustration of the a first and second microimages of different colour density.
The different colour density is achieved in the first and second microimages by different thickness of printing, designated item numbers 968 and 969.
Does D1 disclose a first and second microimage?
The Applicant states in their submissions at paragraphs 79-80:
“However, D1 does not disclose that each unit cell comprises at least two microimage components. The Opponent's contention (at OS [82]) that Figure 16 discloses this feature because if the icon were repeated the hair and outline could be the first microimage and the skin could be the second microimage has two fatal flaws.
First, as is apparent from the language used, it could not be said even on the most generous interpretation that a person skilled in the art carrying out the teaching of D1 would inevitably infringe, because it would be perfectly possible to carry out the teaching of Dl by using a single icon element, or by using another of the elements shown.
Secondly, and more significantly, the hair and outline cannot be meaningfully characterised as separate microimage components, because they do not involve separately identifiable components, as Mr Jotcham explains (at Jotcham [90]). The Opponent's reliance on Figure 10A of the Application does not assist it, since that figure discloses two separately identifiable components (the screened or semi-solid circle, and the solid partial circle).”
Mr Jotcham states in Jotcham at paragraph 90:
“I consider that the only reasonable reading of the Application (including its claims) involves interpreting the phrase "each unit cell comprising at least two microimage components" as necessarily involving at least two separately identifiable components (which may be adjacent or abut each other). The alternative, somewhat ludicrous interpretation would mean that any microimage could be considered to be constructed from a number of sub components or microimage components. In essence, I consider that the Application relates to enabling registration between at least two separately identifiable microimage arrays in the context of a moiré magnification security device. Figures 16 a-f simply do not illustrate (and the accompanying text does not describe) an array of microimage element unit cells, each unit cell comprising at least two microimage components.”
Dr Jolic states at paragraph 20 of Jolic#2:
“In paragraph 90 of Jotcham there is further discussion of the meaning of the expression "each unit cell comprising at least two microimage components". For the reasons set out above, it is clear that this expression encompasses two image components which combine to form a single larger image. It is said in paragraph 90 of Jotcham that these components must be "separately identifiable". It is not clear to me what is meant by the expression "separately identifiable" which is not found in claim 1. What the claim does require is that the two or more microimage components have different colour densities which ultimately result in them appearing in a different colour. It is clear to me that any two or more microimage components which satisfy these requirements will inherently be "separately identifiable". As discussed in paragraph 82 of my First Declaration, the icon element of figure 16a of WO'224 consists of a first component being the central region of the icon element and a second component being the ring surrounding that central region. The colour densities of these two regions differ making them "separately identifiable". There is nothing "ludicrous" about this interpretation, particular having regard the example of the invention of AU'723 discussed by reference figure 10A.”
The description states at page 4, lines 13 to 16:
“The first and second microimage components could define separate microimages and they may be spaced apart or adjacent or even abut one another. The two microimage components could also form parts of a larger symbol or other alphanumeric character, graphic design or the like as will be described below.”
I am of the view that microimage elements which are distinctly different colours can be considered two microimages. If the Applicant had intended that the two microimages differed in some other way (such as the moiré magnification images of the microimages appearing to move in different directions as the device is tilted), then this would have been defined in the claims.
I am satisfied that the first, second and third embodiments of D1 disclose microimages of distinctly different colours and thus each of these embodiments disclose a first and second microimage.
Does D1 disclose the second microimage formed as a screened pattern?
The Opponent states in their submission at paragraphs 84-85:
“D1 discloses that icon elements can be formed by various methods (page 51). It is explicitly stated that:
"…Any of the multitude of common printing methods…letterpress, flexo, gravure, and intaglio, can be used to deposit icon elements 108 of this kind so long as the print resolution is fine enough".
As explained previously, if the printing technique used is one that requires a print master, namely, flexo, gravure, intaglio, then the image created will always be a 'screened pattern' due to the inherent nature of such printing techniques. As such, feature (f) is inherently disclosed.”
Traditional flexo, gravure, intaglio can only print solid colours. Thus, variation in colour density for traditional flexo, gravure, intaglio can only be achieved by halftoning (screened pattern). However, D1 discloses an advanced type of intaglio printing (bas relief printing) in which the colour density can be achieved by varying the thickness of the printed layer.
Although one part of D1 discloses variation of colour density and another part of D1 discloses flexo, gravure, and intaglio printing, D1 does not explicitly disclose printing a variation in colour density using flexo, gravure, or intaglio printing. D1 does not provide a clear and unmistakable disclosure of the second microimage formed as a screened pattern. Thus the claimed invention is novel in light of D1 (WO 2006/125224).
Inventive step legal principles
It is a requirement of subsection 18(1) of the Act that the invention, so far as claimed in any claim, involves an inventive step. Subsection 7(2) states that an invention is taken to involve an inventive step unless it would have been obvious to a person skilled in the art in the light of the common general knowledge, considered alone or together with the prior art:
For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).
Subsection (3) prescribes the information that may be considered as:
The information for the purposes of subsection (2) is:
(a) any single piece of prior art information; or

(b) a combination of any 2 or more pieces of prior art information;
being information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded as relevant and, in the case of information mentioned in paragraph (b), combined as mentioned in that paragraph.
Once the common general knowledge and relevant information has been identified, the test for whether an invention is obvious is to ask whether it would have been a matter of routine to proceed to the claimed invention. In Wellcome Foundation Ltd v V.R. Laboratories (Aust.) Pty Ltd Aickin J stated:
“The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.”
Inventive step
The Opponent argues that the claimed invention lacks an inventive step in light of a) WO 2006/125224 when combined with common general knowledge, and b) common general knowledge alone.
Person skilled in the art
The experts who provided evidence, Mr Jotcham and Dr Jolic, clearly have a great deal of experience in the field of security device technology and thus are each considered to have knowledge representative of a person skilled in the art.
The submissions from both parties aim to elevate the importance of evidence of one expert over the evidence of the other. I see little point in entertaining this approach. The experts’ evidence will be relied upon according to its relevance to the issues; where there is a conflict between the experts’ opinions this will be resolved by weighing up the arguments with respect to the facts of the case.
The problem
The description (with post-acceptance amendments) states at page 2 lines 5 to 6:
“There is an immense technical difficulty in printing two separate microimage arrays which interlace or register in a predetermined way.”
I am satisfied that this characterises the problem which the present invention sought to overcome.
Ascertained, understood, and regarded as relevant
Dr Jolic states in Jolic#1 at paragraph 13:
"I regularly read patent specifications as part of my work at Innovia. On a number of occasions Innovia has engaged external advisors to conduct patent searches to determine whether Innovia has freedom to operate in a specified area. I have reviewed the patent specifications obtained in those searches. I have also regularly reviewed patent specifications obtained for Innovia as part of watching services conducted on its behalf. I have done this in order to keep up to date with changes in technology, to learn what work competitors are carrying out and determine if any work that my colleagues or I are carrying may fall within the scope of other applications."
Similarly, Mr Jotcham also stated at Jotcham paragraph 16:
"…I would then refer to external documents, such as documents in the library of my company (Axess), and patent documents, primarily to check whether the idea I had developed could be the subject of patent protection."
The declarations of Dr Jolic and Mr Jotcham establish that a person skilled in the art would search in patent databases to find information relevant to the problem to be addressed.
Document D1 relates to security documents utilising moiré magnification devices and thus are clearly relevant to the problem. Given that the person skilled in the art would routinely review technical documents including patents, I am satisfied that a person skilled in the art would have ascertained, understood and regarded as relevant D1.
Inventive step in light of D1 (WO 2006/125224)
Would a PSA modify D1 such that screened patterns were used?
The only feature missing from D1 is the second microimage formed as a screened pattern.
It is notable that in microimages, printing resolution is critical. For example, Mr Jotcham states at paragraph 24:
“Just before the priority date, moiré magnification had some substantial drawbacks. The primary drawback was the size of the moiré magnification devices, which were quite large. Nanoventions managed to shrink both the size of the lenses and the size of the images so that the device was small enough to be used on a thin security label or thread. Other drawbacks included:
a. the resolution of the visible image. The resolution of the image was quite low. Improving the resolution of image would improve its anticounterfeiting properties.
b. the devices were available in a limited set of colours. In improving moiré magnification devices, I would attempt to increase the range of colours that could be used with such devices. Nanoventions had made some progress in this regard, being able to produce blue security labels as well as green labels.”
Patterns printed by pressing printing techniques such as flexography and intaglio without using screened patterns achieve a higher resolution than screened pattern techniques.
D1 provides a practical way of printing both high resolution and variation in colour density by varying the thickness of the printed layer.
The Opponent states at paragraph 129 of their submissions:
“Mr Jotcham argues that D1 does not disclose that the second microimage elements are formed as a screened pattern. The Opponent submits that printing an image as a screened pattern is part of the common general knowledge, as screening or halftoning is an essential pre-press process that takes place in all printing techniques that require a print master.”
The Opponent’s submissions do not acknowledge that printing microimages requires a much higher resolution than printing normal images. There is no evidence to support the assertion that screened patterns would be used in printing microimages.
Dr Jolic states in Jolic#1 at paragraph 57:
“The examples of the invention of AU'723 described by reference to figures 6 and 7 are said to have the micro images formed by printing. For the reasons discussed above, I consider that as at March 2010, it would not have been possible to form the micro images illustrated in figures 6 and 7 by standard printing techniques such as gravure printing so as to produce a micro image of a size in the order of 50μm. Accordingly, I consider that it would not be possible to form a moiré magnification device suitable for use in a document such as a banknote in which the micro images illustrated in figures 6 and 7 where produced by standard printing techniques.”
This highlights the difficulties of printing at a resolution high enough for screen pattern printing microimages in a moiré magnification device such as a banknote. Given the importance of high resolution in printing microimages I am not satisfied that a person skilled in the art would consider modifying D1 to use a printing method with an intrinsically lower resolution.
I am not satisfied that claimed invention lacks an inventive step in light of D1. Consequently the claims are considered inventive in light of D1 (WO 2006/125224).
Inventive step in light of common general knowledge alone
Dr Jolic states at paragraph 35 of Jolic#1:
“I have been asked by Phillips Ormonde Fitzpatrick to consider the following problem:
Given the difficulty referred to on page 2 of Annexure KJ-7, if I wanted to create two separate micro image arrays which interlace or register in a predetermined way, with the colour of the images in one array being different to the colour of the images in the other, how would I go about addressing that problem based on my knowledge up until March 2010.”
The difficulty referred to on Page 2 of Annexure KJ-7 is:
“There is an immense technical difficulty in printing two separate microimage arrays which interlace or register in a predetermined way.”
Dr Jolic goes on to speculate about alternative approaches to solving the problem presented to him by Phillips Ormonde Fitzpatrick. At paragraphs 40-41 he states:
“An alternative approach to addressing the problem set out above would be to control the tone of different parts of the image array to achieve different tones of a single colour.
For example, each tonal image could be printed as a dithered bitmap image. Dithering is a way of simulating grey levels using a binary image and is typically achieved by printing dots or varying size known as Amplitude Modulation ("AM") or alternatively by printing dots of the same size but with different densities/frequencies, known as Frequency Modulation ("FM"). AM and FM modulation are established pre-press methods of converting a greyscale image into a bitmap image in order to produce print tooling for printing of tonal images, for example in newspapers. It is used in standard graphics preparation for commercial printing of tonal images. The same method can be used to achieve different tones of colour in micro image arrays which are interlaced or in register.”

Dr Jolic states in Jolic#1 at paragraph 44:
“Although the approaches I describe above would be routine in a general sense, there may be issues with these approaches depending on the desired thickness of the moiré magnification device to be produced. If I wanted to create a fairly thin device, similar to the thickness of a polymer bank note, I would typically use a spherical lens having a diameter around 50μm. The focal lengths of such lenses, which affect the thickness of the device, would be around 100 microns (depending on the lens geometry and refractive index that is used). In such a device, each micro image could be a maximum of about 50x50μm in size (assuming square packing of the lens and image array elements is used). From my experience in offset printing, a realistic pixel size producible by high resolution offset printing is in the region of 10μm per pixel. As such, an image produced by such printing would be limited to a 5x5 pixel array (assume square packing of the lens and image array elements is used). This would significantly limit the complexity of the micro images which could be produced.”
Dr Jolic goes on to state in Jolic#1 at paragraph 62:
“For the reasons set out above, I also consider that the moiré magnification device defined in this claim is nothing more than a routine application of well-known principles applicable to the design of a moiré image. I also consider that the moiré magnification device defined in this claim is not materially different to the design solution I described in paragraphs 40 to 42 above. In particular, I suggested that micro images of different shades could be provided by employing tonal differences. I also suggested that the tonal differences between such micro images could be enhanced by the application of a further coloured layer. These proposed solutions were based on routine principles of moiré image design and commercial printing of tonal images, along with work that I had conducted prior to march [sic] 2010.”
Mr Jotcham states at paragraph 26:
“Having given the evidence above, I was asked by DCC to consider how, at the priority date, I might produce moiré magnification devices having different colours. Moire magnification devices I was aware of before the priority date only generated monochromatic images.”
At paragraph 29 Mr Jotcham goes onto to provide three approaches to solving the registration problem. None of the solutions provided by Mr Jotcham use halftone printing.
Mr Jotcham raises some doubt about the validity Dr Jolic’s assessment. Mr Jotcham states in Jotcham at paragraph 157:
“More generally, Mr Jolic appears to consider that the invention described and claimed in the Application was a matter of routine as at the priority date. I disagree, and I consider it telling that none of the documents identified by Mr Jolic clearly and unambiguously disclose the very neat solution of the specific combination of features of the invention, even while recognising the problem of image registration.”
Mr Jotcham states at paragraph 150:
“It may be that Mr Jolic's views on what was background knowledge is coloured by the fact that Mr Jolic is inventive (being named as an inventor on a number of patent applications for security devices for documents). As an aside, I also note that Mr Jolic is not independent of the parties to this dispute (having been employed by Innovia Security Pty Ltd or its predecessor for around 10 years).”
Mr Jotcham states at paragraph 160:
“I consider that none of the prior art documents I have commented on above describe or suggest all of the features of claim 4, and in particular, do not suggest that the second micro image components are formed as a screened pattern. Some of the documents, such as KJ-6, refer to microstructures, or micro-printing involving changes in optical density. The Giesecke & Devrient documents, such as KJ-11 and KJ-13, refer to embossing, and also the use of microstructures. I consider that the use of a screened pattern to be a clever way to maintain image registration, while controlling the extent to which a coloured layer alters the visual appearance of an image.”
Is Dr Jolic’s opinion independent?
Dr Jolic has been asked, in his capacity as an expert in the field, to provide evidence. There is a presumption that experts provide their evidence in a professional and unbiased manner. The fact that Dr Jolic was employed by Innovia Security Pty Ltd or its predecessor for around 10 years is not sufficient cause to override this presumption. I accept that Dr Jolic’s evidence is independent and unbiased.
Is Dr Jolic’s opinion inventive?
Asking an expert what they (as a person skilled in the art) would have done at the priority date when posed with a particular problem is fraught with difficulty. The expert must attempt to empty their mind of any information they have acquired after the priority date. The expert must then attempt to answer the question only in terms of what would have been a matter of routine without using any inventive faculty. It is difficult to eliminate the possibility that, in answering the question posed, the expert inadvertently utilised inventive reasoning.
Conclusion of inventive step in light of common general knowledge alone
On one hand, Dr Jolic arrived at the claimed invention when presented with the problem, suggesting the claimed invention is not inventive. On the other hand, Mr Jotcham did not arrive at the claimed invention when presented with the problem, suggesting the claimed invention is inventive. I consider there to be the possibility that Dr Jolic inadvertently utilised inventive reasoning in providing a solution to the problem posed.
I consider that the evidence is finely balanced on whether the claimed invention is inventive in light of the common general knowledge. However there is enough doubt raised in the evidence that I cannot be clearly satisfied that the claimed invention lacks inventive step. Consequently the claims are considered inventive in light of common general knowledge alone.
Fair basis legal principles
It is a requirement of subsection 40(3) of the Act that the claims must be fairly based, that is to say, consistent with the described invention, and not travelling beyond the subject matter of the disclosure.
The body of the specification must provide “a real and reasonably clear disclosure” of the invention claimed (Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58; 212 ALR 1 at [69]) and the claims must not travel beyond the matter described in the body of the specification (Lockwood at [91]).
The test for fair basis was given by the High Court in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58 at [69] as:
“... 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.”
Fair Basis
Registration
The opponent states in their submissions at paragraph 153:
“As discussed in relation to utility above, the body of the Specification, read as a whole, discloses that the invention [sic] to provide "separate" microimage arrays of different colour in register or, at least, are insensitive to uncontrolled manufacturing variations in the register (see, in support of this, Jolic 1, [60]). However, the claims of the Application are infringed whether the microimage arrays (the first and second microimage components) have their registration controlled or not. That is, there is nothing in the claims which provides any restrictions as to the registration of the first and second microimage components, therefore, they encompass methods which do not control registration and, are, therefore, not fairly based on the Specification.”
The Applicant states in their submissions at paragraph 116:
“In the present case, the specification discloses that by printing a first and second microimage in different colour density, and overlaying a separate coloured layer, the moiré image can be achieved. That is precisely what is claimed. The fact that the benefit of that process (registration of the images) is not claimed does not mean that the claims are not fairly based. In this case, the invention reflects the consistory clause and the claim.”
The claimed invention covers both when the printing of the first and second microimage is achieved in one printing process (as shown in figure 8) and in two printing processes (as shown in figure 5). The method using one printing process inherently achieves registration of microimages, whereas the method using two printing processes does not have an inherent registration of microimages.
There is no evidence to suggest that printing two microimage arrays that are not in registration would not produce moiré magnified images. Indeed, it seems reasonable that microimage arrays not in registration would still produce moiré magnified images, although a characteristic of those moiré magnified images (such as direction of movement) might not be as intended.
Because both methods (using one and two printing processes) are described, the aspect of the claim covering two printing processes is considered fairly based.
Moiré magnification colour
The Opponent states:
“The body of the Specification, read as a whole, discloses that the invention provides different colours of microimage arrays (the first and second microimage components) when they are magnified due to the moiré effect (see page 4, lines 1 to 12, and the rest of the Specification generally). However, the claims of the Application only specify that the "when the device is viewed" that "the second microimage components appear in a colour dependent at least partly on the further coloured layer and which is different from the colour of the first microimage components". As the Specification only teaches that the colours are provided when magnified, the claims are not fairly based. There is nothing in the Specification which, for example, suggests that colour dependency of the first and second microimage components are viewable when the device is viewed through the "further coloured layer", for example (taking Fig. 8 as an example, from the side of the "second background coating" 256).
Claim 7 requires the 'further coloured layer' to vary its colour in a lateral direction. The detailed description provides no specific details as to how the colour variation is achieved, in a lateral direction.”
The Applicant states:
“The specification discloses that when the device is viewed as it is intended to be (when magnified) the second microimage will appear in a colour dependent on the further coloured layer. A practical and common sense reading of the claim reflects that it reflects the specification.”
The claim defines that the screened pattern blends with the background colour because it is sufficiently high resolution. This is particularly important since the microimages are magnified by the microfocusing elements. Thus the microimages must be of sufficiently high resolution that, even with magnification of the microfocusing elements, the individual colours of the screened pattern printing and background cannot be discerned. This aspect is considered to be fairly based on the description.
Claim 7 defines the feature of the further coloured layer varies in a lateral direction. The corresponding description states at page 4 lines 27 to 31:
“The further coloured layer typically presents a uniform colour although further difficult to reproduce effects can be achieved by providing the further coloured layer in a colour which varies laterally across the device. In this way, very complex magnified versions of the microimage components can be obtained.”
And at page 15 lines 4 to 7:
“In this example, the second colour is applied as a uniform coating 256. However, it would also be possible to use a variety of other types of coloured coating, for example in which the colour varies in a lateral manner across the device.”
I am satisfied that these parts of the description provide sufficient information such that the claim is fairly based. Claim 7 is considered fairly based.
For completeness I will also briefly consider whether there is an enabling disclosure of the further coloured layer varying laterally. The requirement that the further coloured layer varies in the lateral direction could be as simple as the layer being printed as two adjacent colours rather than one uniform colour. My understanding is that the further coloured layer of two adjacent colours could be added to the device without being precisely registered with the microimages. Although not explicitly disclosed in the specification, I consider it to be common general knowledge to print a further colour layer with two adjacent colours rather than one uniform colour, thus this aspect of the invention has an enabling disclosure.
Utility legal principles
Section 7A of the Patents Act 1990 (Cth) requires that the invention (so far as claimed) is useful. In Ranbaxy Australia Pty Ltd v Warner-LambertCoLLC [2008] FCAFC 82 at [141] it was stated that "the invention as claimed must attain the result promised by the patentee".
In Streetworx Pty Ltd v Artcraft Urban Group Pty Ltd [2014] FCA 1366 at [340], Beach J proposed a three-question test when considering utility:
i. What has the patentee promised for the invention as described in the relevant claim?
ii. Is the promise useful?
iii. Has that promise been met?
It was also established by the Full Federal Court in H LundbeckAJS v Alphapharm Pty Ltd [2009] FCAFC 70 that:
“A claim is bad if it covers means that will not produce the desired result, even if a skilled person would know which means to avoid. That is to say, everything that is within the scope of a claim must be useful, otherwise the claim will fail for inutility.”
Utility
The Opponent states in their submissions at paragraphs 146-149:
“The Specification clearly indicates that the great issue to be dealt with in respect of providing moire magnification devices is providing "two separate" moire magnification arrays which interlace or register in a predetermined way (page 2, lines 5-6, AU 2011222723C1). This issue was an expansion of a further defined problem in an earlier version of the Specification, AU 2011222723A1, which, at page 2 lines 16-18, stated "[h]itherto no moire magnifier devices have been demonstrated in the public domain which show two or more image icons of differing colour in predetermined mutual register".
As such, the "promise" of the Specification is to provide "separate" microimage arrays of different colour in register, or in the alternative, are insensitive to uncontrolled manufacturing variations in the register (page 12, lines 7-10, AU 2011222723C1).
However, claim 1 has no indication of register between separate microimage arrays, which can be taken to be the first and second microimage components of claim 1. In fact, there is no indication in the claims at all as to how the first and second microimage components are registered and the claim encompasses first and second microimage components which are not in register at all.
Moreover, in the alternative, there is nothing in claim 1 which demonstrates that the first and second microimage components are insensitive to uncontrolled manufacturing variations in the register. The Specification is clear that this is "an important aspect of this invention" (page 12, lines 10, AU 2011222723C1). Yet the claims fails to attain the result promised. Accordingly, claim 1, and all dependent claims, lack utility under section 18(1)(c) of the Act.”
The Applicant states in their submission at paragraph 109:
“There is no evidence that moiré magnification devices which fall within the scope of the claims would not be useful, or would be out of register (cf OS [148]), or that they would be sensitive to uncontrolled manufacturing variation (cf OS [149]).”
The promise of the invention is a method of printing two microimage arrays of two different colours that maintains registration (i.e. relative alignment) between the microimage arrays. Maintaining registration is difficult because of the extremely small size of printing necessary for microimages.
The specification provides two different methods of forming the first and second microimages – either as one printing process (as shown in figure 8) or in two printing processes (as shown in figure 5).
Both experts agree that maintaining registration between two microimage arrays printed by two process is very difficult. For example, Jolic states in Jolic#1 at paragraph 58:
“Having regard to the asserted problem set out on page 2 at paragraph 3 of AU'723, I consider that the invention as described does not so much solve the technical difficulty identified but rather avoids it. It does so by printing the first and second image components (one of which is screened) in a single print run (thereby avoiding the registrations issues associated with multiple print runs) and then modifies the colour of one of the image components by applying a second colour layer.”
Jotcham states at paragraph 29:
“At the priority date, the difficulties with maintaining registration would have been nearly insurmountable.”
The method using one printing process inherently achieves registration of microimages, whereas the method using two printing processes does not have an inherent registration of microimages. Claim 1 encompasses both methods; thus, claim 1 includes within its scope the method using two processes.
The specification provides no indication of how registration of first and second microimage arrays is achieved when printed with two processes. To the extent the claims cover the method using two printing processes, claim 1 lacks utility. None of the dependent claims are specific or limited to the first and second microimages being printed in a single process, thus these claims also lack utility.
Conclusion
Claims 1-22 lack utility. I am of the view that this matter may be overcome by amendment and consequently the applicant is allowed 2 months from the date of this decision to propose suitable amendments.
Claims 1-22 are novel, inventive and fairly based.
Costs
Costs typically follow the event. I see no reason to depart from that result. The opposition has been successful. I therefore award costs according to Schedule 8 against the Applicant, De La Rue International Limited.
Xavier Gisz
Delegate of the Commissioner of Patents