CCL Secure Pty Ltd (formerly Innovia Security Pty Ltd) v De La Rue International Limited
[2018] APO 60
•5 September 2018
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
CCL Secure Pty Ltd (formerly Innovia Security Pty Ltd) v De La Rue International Limited
[2018] APO 60
Patent Application: 2011222720
Title:Moiré magnification device
Patent Applicant: De La Rue International Limited
Opponent: CCL Secure Pty Ltd (formerly Innovia Security Pty Ltd)
Delegate: Dr V. Z. Kolev
Decision Date: 5 September 2018
Hearing Date: 29 September 2017, in Canberra
Catchwords: PATENTS – opposition to the grant of a patent – clarity – novelty – inventive step – claims define the invention – fair basis – moiré magnification devices – registration issues when printing microimages in different colours – undesirable visual effects due to colour mis-registration – two microimage arrays of a different colour – one of the magnified arrays viewed against a generic background defined by a line pattern generated by another magnified array – essential features – opposition successful on the ground of fair basis only – costs awarded
Representation: Counsel for the applicant: Mr Chris Burgess
Patent attorney for the opponent: Mr Chris Schlicht of Phillips Ormonde Fitzpatrick
Also present: Mr Ian Lindsay and Ms Cici Cui of CCL Secure Pty Ltd (formerly Innovia Security Pty Ltd)
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2011222720
Title:Moiré magnification device
Patent Applicant: De La Rue International Limited
Date of Decision: 5 September 2018
DECISION
The opposition is successful in that claims 7 and 9 are not fairly based on the matter described in the specification; however this is the only successful ground of opposition. I give De La Rue International Limited two months from the date of this decision to propose amendments in order to overcome the negative finding with respect to fair basis.
I award costs according to Schedule 8 against De La Rue International Limited.
REASONS FOR DECISION
Throughout this decision, unless explicitly stated otherwise, any reference to an Act or a section, subsection, etc. of an Act refers to the Patents Act 1990 (the Act), and any reference to Regulations or a specific regulation refers to the Patents Regulations 1991 (the Regulations).
Background
The matter relates to patent application 2011222720 (the Application) in the name of De La Rue International Limited (the Applicant). The Application is a national phase of international application PCT/GB2011/050404 published as WO 2011/107788. The Application claims a priority date of 01 March 2010.
The Application was advertised as accepted on 02 April 2015. A notice of opposition to grant was filed on 09 July 2015 by CCL Secure Pty Ltd (formerly Innovia Security Pty Ltd) (the Opponent) together with a request for extension of time under paragraph 223(2)(a) to file a notice of opposition which request for extension was later granted. The statement of grounds and particulars (the SGP) and the accompanying documents were filed on 09 October 2015.
On 16 December 2015, the Applicant filed amendments under section 104, which were later allowed unopposed on 28 April 2016. Evidence in support was filed on 11 January 2016. On 12 January 2016, a Delegate issued a letter inviting the Opponent to consider whether they wished to request a stay in view of the proposed amendments that were filed before the evidence in support was due. No response to that letter was received and the evidence in support was deemed completed on 27 January 2016.
On 12 February 2016, the Opponent filed a request to amend the SGP under regulation 5.16, which was subsequently allowed on 04 March 2016. The evidence in answer was completed on 27 April 2016. On 17 June 2016, the Applicant filed a second set of amendments under section 104, which were subsequently allowed unopposed on 12 October 2016. The evidence in reply was completed on 28 June 2016.
On 19 August 2016, the Applicant filed a third set of amendments under section 104, which were subsequently allowed unopposed on 16 December 2016. On 31 January 2017, the Opponent filed a second request to amend the SGP under regulation 5.16, which was subsequently allowed on 22 February 2017. On 07 February 2017, the Applicant filed a fourth set of amendments under section 104, which were subsequently allowed unopposed on 13 June 2017.
The “Opponent’s Outline of Submissions” (the Opponent’s Summary or OS) was filed on 15 September 2017. The “Applicant’s Outline of Submissions” (the Applicant’s Summary or AS) was filed on 22 September 2017.
Relevantly, the present hearing is with respect to the Application as amended by the amendment filed on 07 February 2017, and is based on the SGP as amended on 22 February 2017.
Applicable Law and Onus
On 15 April 2013, the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 commenced which resulted in significant amendments to the Act and Regulations 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]).
10. 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.
11. It is well settled that the Opponent has the onus of establishing the facts supporting the grounds of opposition.
Grounds of Opposition and Evidence
12. The SGP lists the following as grounds of opposition:
·Invalid priority date;
·Lack of novelty – subparagraph 18(1)(b)(i);
·Lack of inventive step – subparagraph 18(1)(b)(ii);
·Not a manner of manufacture – paragraph 18(1)(a);
·Not useful – paragraph 18(1)(c);
·The specification does not describe the invention fully, including the best method known to the applicant of performing the invention – paragraph 40(2)(a);
·Claims do not define the invention – paragraph 40(2)(b);
·Claims are not clear – subsection 40(3); and
·Claims are not fairly based – subsection 40(3).
13. However, I note that in the Opponent’s Summary, several of the above grounds have been dropped, the remaining grounds being as follows:
·Claims are not clear;
·Lack of novelty;
·Lack of inventive step;
·Claims do not define the invention; and
·Claims are not fairly based.
14. Therefore, I will limit my consideration to the five grounds as listed immediately above and I will discuss them in the order in which they appear in this list.
15. The evidence in support consists of:
·A declaration by Ms Magda Khalil Bramante dated 11 January 2016 with exhibits MKB-1 and MKB-2;
·A declaration by Dr Bruce Alfred Hardwick dated 06 January 2016 (Hardwick-1) with exhibits BAH-1 to BAH-9; and
·A declaration by Dr Michael Christopher Hutley dated 26 December 2015 with exhibit MCH-1.
16. The evidence in answer consists of:
·A declaration by Dr Malcolm Robert Murray Knight dated 26 April 2016 (Knight) with exhibits MK-1 to MK-11.
17. The evidence in reply consists of:
·A declaration by Dr Bruce Alfred Hardwick dated 27 June 2016 (Hardwick-2) with exhibits BAH-10 and BAH-11.
The Specification of the Application
18. Here, I will provide a brief discussion of the specification as necessary for understanding the nature of the claimed invention. I will make additional references to the body of the specification later in this decision where necessary.
19. The title of the specification is “Moiré magnification device” and the technical field of the invention is characterised in the description as:
“The invention relates to a moiré magnification device such as a security device, for example for use on security documents and other articles of value such as banknotes, cheques, passports, identity cards, certificates of authenticity, fiscal stamps and other documents for securing value or personal identity. It also relates to optical devices for use on packaging or the like.” (page 1, lines 2-6)
20. The section “Background” explains the basic design and operation of the moiré magnification devices:
“In such devices, a regular array of micro-focusing elements defining a focal plane is provided over a corresponding array of image elements located in a plane substantially aligned with the focal plane of the focusing elements. The pitch or periodicity of the array of image elements is chosen to differ by a small factor from the pitch or periodicity of the focusing elements and this mismatch means that magnified versions of the image elements are generated.” (page 1, lines 9-15)
21. The specification clarifies that “[t]ypically, the focusing elements comprise microlenses or micromirrors and the image elements are defined by simple icons or the like” (page 2, lines 4-5). The explanation continues:
“The magnification factor depends upon the difference between the periodicities or pitches. A pitch mismatch between a microlens array and a microimage array can also conveniently be generated by rotating the microimage array relative to the microlens array or vice-versa, such that the microlens array and microimage array have a rotational misalignment. The rotational misalignment or the small pitch mismatch results in the eye observing a different part of the image in each neighbouring lens resulting in a magnified image. If the eye is then moved relative to the lens/image array a different part of the image is observed giving the impression that the image is in a different position. If the eye is moved in a smooth manner a series of images are observed giving rise to the impression that the image is moving relative to the surface. In the case where the pitch mismatch is generated by rotational misalignment the array of magnified images is rotated relative to the microimage array and consequently the parallax effect that results in the apparent movement of the magnified image is also rotated and this is known as skew parallax.” (page 1, lines 16-30)
22. It is worth noting that due to the pitch mismatch or rotational misalignment, neighbouring micro-focusing elements are positioned differently with respect to the image elements of the corresponding array. Therefore, when the image elements of the array are identical, this optical arrangement results in neighbouring micro-focusing elements each creating a magnified image of a different portion of an identical corresponding image element, hence an array of magnified images of the image elements is generated. Since each magnified image is generated by several neighbouring micro-focussing elements and includes magnified portions of several neighbouring image elements, it is sometimes referred to as a “synthetic image” or “synthetically magnified image”.
23. The next section “Summary” includes a consistory statement corresponding to the independent claim 1. The section “Detailed Description” describes the preferred embodiments of the invention with reference to Figures 1 to 20.
24. The specification ends with 29 claims. Claim 1 is the only independent claim and it is reproduced below. For better visual separation of the defined features, in some places I have separated the continuous text of the claim by empty lines:
“1. A moiré magnification device comprising a transparent substrate carrying:
i) a regular array of micro-focusing elements on a first surface, the focusing elements defining a focal plane;
ii) a corresponding first array of microimage elements in a first colour and located in a plane substantially coincident with the focal plane of the focusing elements; and,
iii) a corresponding second array of microimage elements, in a second colour different from the first colour, and located in a plane substantially coincident with the focal plane of the focusing elements,
wherein the pitches of the micro-focusing elements and first and second arrays of microimage elements and their relative locations are such that the array of micro-focusing elements cooperates with each of the first and second arrays of microimage elements to generate respective magnified versions of the microimage elements of each array due to the moiré effect
and such that the magnified version of the first array of microimage elements is viewed against a generic background defined by the magnified version of the second array of microimage elements,
the magnified version of the first array of microimage elements exhibiting movement relative to the background when the device is tilted,
and wherein the pitch mismatch between the arrays is chosen such that the magnified version of the elements of the first array appears above or below the magnified version of the elements of the second array,
wherein where the micro-focusing elements comprise concave mirrors, at least one of the first and second arrays of microimage elements is at least partially translucent,
and wherein the generic background is defined by a line pattern.”
25. It is worth noting that the claim relates to a specific type of moiré magnification devices having two arrays of microimage elements of a different colour, configured such that the magnified version of one of the arrays appears at a different relative depth (i.e. above or below) with respect to the magnified version of the other array. Such type of devices could be illustrated with reference to Figures 2A-2C, 3, and 4A-4D, all of which are reproduced below. I must emphasise that this is only an illustration of the type of devices subject of the claim; the specific device as illustrated on these figures may not necessarily be within the scope of the claim.
26. Figures 2A-2C illustrate the appearance of the device (the “stars” forming a background for the “fives”). Figure 3 illustrates schematically the relative depth of the magnified images (the “fives” appear above the “stars”). Figures 4A and 4C illustrate the two microimage elements whereas Figures 4B and 4D illustrate portions of the two corresponding arrays of microimage elements.
Claim Interpretation and Clarity under Subsection 40(3)
27. In what follows, all references to Macquarie Dictionary point to its online edition. Unless different date is explicitly stated, the online edition was reviewed on 28 September 2017.
28. The interpretation of several terms and expressions used in the claims caused disagreements between the parties. As the evidence does not appear to suggest any special meaning in the art and given the importance of the issues, at the hearing, I provided the parties with printouts from Macquarie Dictionary containing the definitions of the words “background”, “generic”, “against”, “pattern”, and “line”. I invited the parties to file brief additional submissions expressing their views on the interpretation of the expressions in claim 1 containing these words, namely “the magnified version of the first array of microimage elements is viewed against a generic background defined by the magnified version of the second array of microimage elements” and “the generic background is defined by a line pattern”. Following my invitation, the Opponent filed “Supplementary Submissions” (the Opponent’s Additional Submissions, or OAS) and the Applicant filed “Applicant’s Supplementary Note on Claim Construction” (the Applicant’s Additional Submissions, or AAS).
Viewed against a background
29. In essence, the expression “the magnified version of the first array of microimage elements is viewed against a generic background defined by the magnified version of the second array of microimage elements” consists of two parts: (i) the magnified version of the first array of microimage elements is viewed against a background defined by the magnified version of the second array of microimage elements, and (ii) the background defined by the magnified version of the second array of microimage elements is generic. Under this heading, I will consider part (i). I will discuss part (ii) later in this decision under a separate heading.
30. With respect to the word “background”, the Opponent adopts the first definition in Macquarie Dictionary – “the ground or parts situated in the rear” (OAS at [2.1]). In addition, regarding the word “against”, the Opponent states:
“We submit that the term ‘against’ should be interpreted to have its ordinary meaning of ‘upon’ which is included in the first series of meanings in the Macquarie Dictionary extract.
The sixth meaning for the term ‘against’ in the extract is also particularly relevant:
‘in contrast with; having as background: the pictures stand out against the dark wall’
This is consistent with, and reinforces the meaning of a ‘background’ defining a feature situated behind or in the rear in relation to another feature.” (OAS at [3.1-3.3])
31. The Opponent further asserts that this renders claim 1 unclear:
“Hence, we submit that the passage from claim 1 clearly discloses that the virtual images of the second array appear behind the virtual images of the first array.
However, this leads to a lack of clarity elsewhere in claim 1 as it recites that the magnified version of the first array of miro-image elements may appear below the magnified version of the elements of the second array.” (OAS at [2.3-2.4])
32. The Opponent also refers to Hardwick-1 at [71]:
“I note that earlier in the claim it is stated that the magnified version of the first array of micro-image elements is viewed against a background defined by the magnified version of the second array of micro-image elements. The image elements appear at different depths. I understand that this describes an arrangement where the magnified first image elements appear close to the viewer and in front of the magnified second image elements. Yet if the magnified version of the first array appears below the magnified version of the second array (as recited at the end of the claim) then the second array images are necessarily in front of or above the first array images. I do not see how in this situation, the second array images form a background for the first array images.”
33. The asserted ambiguity arises from the fact that, on one hand, the use of the word “background” could be suggesting that the magnified version of the elements of the first array must always appear above the magnified version of the elements of the second array (which forms the background); however on the other hand, the claim elsewhere defines that “the magnified version of the elements of the first array appears above or below the magnified version of the elements of the second array”. Hence, it could be argued that it is unclear whether the magnified version of the elements of the first array can, in fact, appear below the magnified version of the elements of the second array (i.e. below the background) or not.
34. On proper construction of claim 1, I must emphasise that the claim explicitly defines that “the magnified version of the elements of the first array appears above or below the magnified version of the elements of the second array”. In other words, the claim explicitly defines that the magnified version of the elements of the first array can appear below the background. In light of this explicit definition, the apparent conflict with what may indeed be a commonly perceived meaning of the word “background” (but clearly not the only one according to Macquarie Dictionary) could only mean that, in the claim, the word “background” is not used to convey this meaning.
35. I will now return to Macquarie Dictionary. I note that according to definition 2a, the word “background” means “the surface or ground against which the parts of a picture are relieved”. In turn, “relieve” means (Macquarie Dictionary as reviewed on 19 December 2017, definition 7) “to bring into relief or prominence; heighten the effect of”. Hence an ordinary meaning of the word “background” is a surface against which the parts of a picture are brought into prominence; or the effect of these parts of the picture is heightened. Relevantly, this does not impose any relative positional restrictions with respect to the surface and the parts of the picture, hence in the context of the claim, I consider that this is the correct interpretation of the word “background”.
36. Therefore, the fact that the magnified version of the elements of the second array is referred to in claim 1 as “background” does not make the scope of the claim unclear. As I already mentioned, the claim clearly defines that the magnified version of the elements of the first array can appear below the magnified version of the elements of the second array and I consider that this is the correct interpretation.
Line pattern
37. With respect to the word “line”, both parties submit (OAS at [4.2]; AAS at [4]) that it should be interpreted following the first definition of Macquarie Dictionary: “a mark or stroke long in proportion to its breadth, made with a pen, pencil, tool, etc., on a surface”. I agree.
38. Regarding the word “pattern”, the Opponent submits:
“We submit that the term ‘pattern’ should be understood to mean a regularly repeated arrangement. In support of this interpretation we refer the Hearing Officer to the Cambridge Dictionary website at where it is stated to mean:
‘any regularly repeated arrangement, especially a design made from repeated lines, shapes, or colours on a surface’
The meaning is very applicable to a moire magnification device which has visual arrays made up of repeated shapes.” (OAS at [4.3])
39. The Opponent concludes: “[h]ence, a ‘line pattern’ can mean a series of repeated lines. This is consistent with the comments provided by Dr Hardwick (Hardwick No. 2, para 20)” (OAS at [4.4], emphasis added).
40. In the above mentioned paragraph of his declaration, Dr Hardwick discusses the apparent inconsistency in the former claim 13:
“I further note that [the formerly] amended claim 13 defines various types of generic backgrounds being one or more parallel (straight) lines, simple geometric figures and complex line structures such as guilloche patterns. As the claim is dependent upon claim 12, which is dependent upon amended claim 1 [which states that the background is defined by a line pattern], I understand that it is now recited that the patterns of claim 13 are all types of line patterns. However this is different to my understanding of what is disclosed at page 5 of '720 [the Application] and what was disclosed in the entirety of '720 before the amendment. At page 5, line 15 to 17 of the patent specification (which is not been changed by amendment) a line pattern, simple geometric figure and complex line structures such as guilloche patterns, are all presented as examples of different generic backgrounds. Claim 13 as unamended disclosed the same idea. This made sense to me. Ordinarily I would understand a ‘line pattern’ to be a series or pattern of lines. I understand a ‘geometric figure’ to [sic] a straight or curved sided object such as a triangle, square, star or circle. Hence, a geometric figure may be different to a line pattern.” (emphasis added)
41. It is clear that Dr Hardwick does not consider that, in general, geometric figures could be referred to as line patterns.
42. Regarding the word “pattern”, the Applicant relies on the first definition of Macquarie Dictionary – “a decorative design, as for china, wallpaper, textile fabrics, etc.” and states that “[t]he meaning of the claim words line pattern is straightforward: a pattern comprised of one or more lines” (AAS at [4], original emphasis). I note that the definition of Macquarie Dictionary does not require a “regularly repeated arrangement”.
43. The Applicant further explains:
“Symbols (e.g. $), icons (e.g. a star), letters of the alphabet (e.g. ‘A’), numbers (e.g. ‘5’) and geometric shapes (e.g. circles) are not lines or line patterns:
(a) As a matter of plain English, it would be most unusual to describe e.g. a currency symbol, the letter ‘A’, the numeral ‘5’ or a ‘circle’ as a ‘line’ or a ‘line pattern’.
(b) Where the specification refers to the use of symbols, icons, letters, numbers or shapes it (1) describes such images in those terms and (2) distinguishes them as something different from a line pattern.” (AAS at [5], original emphasis)
44. From a purely academic point of view, it might appear that any complex design pattern could be considered a line pattern as long as it is made up of lines. For example, in a regular array of circles, each circle could be considered a curved line, hence the whole array would be a line pattern. However this approach does not take into account the perception of the design by a human observer which is relevant to how a particular design would be referred to or described in words. For example, it is highly unlikely that a hand written word would be described as a line pattern although it might, in fact, consist entirely of curved lines.
45. I conclude that the term “line pattern” refers to a design consisting of one or more straight or curved marks or strokes that will be perceived by an observer as lines, where a meaningful depiction of a symbol or a more complex shape cannot be clearly discerned. In line with this interpretation, the regular array of circles mentioned above would be considered a circle pattern and not a line pattern.
46. The Opponent further comments that:
“The lines can be of any dimensions. By way of example, if the first array is a repeated series of ‘fives’ (as seen in Figures 2A – 2C) and the background is made up of a simple pattern of repeated vertical lines, each line and each space between the lines of the background could be the same width of an individual ‘five’. In one device, a line may be located behind a [‘]five’ when viewed from a certain angle. In another device, a space could be located behind a ‘five’ when viewed from the identical angle. This is because the first array of ‘fives’ and the second array of lines are printed in separate steps and the claimed invention does not aim to provide device [sic] where the separately printed arrays are in registration with each other. This example illustrates that the line pattern does not lead to a consistency of appearance in the moire magnification device of claim 1.” (OAS at [4.5])
Figures 2A-2C are reproduced earlier in this decision.
47. In the context of the claims, I do not consider that lines of any dimensions would be perceived as lines. In the Opponent’s example, I do not consider that a line of “the same width of an individual ‘five’”, when observed together with the “five”, would be perceived as a line. For this to happen, the line (i.e. “a mark or stroke long in proportion to its breadth, made with a pen, pencil, tool, etc., on a surface”) of the background should be comparable in width to the line(s) from which the individual “five” is comprised. A line as wide as the entire “five” would be perceived, e.g., as a stripe, which Macquarie Dictionary as reviewed on 19 December 2017 defines as “a relatively long, narrow band of a different colour, appearance, weave, material, or nature from the rest of a surface or thing: the stripes of a zebra”. Then, the background would be referred to as a stripe pattern and not a line pattern.
Generic background
48. I will now return to the expression “the magnified version of the first array of microimage elements is viewed against a generic background defined by the magnified version of the second array of microimage elements”, and will consider part (ii) – the background defined by the magnified version of the second array of microimage elements is generic.
49. The Opponent submits:
“As to the term ‘generic’, the Macquarie Dictionary provides the following definitions:
‘1. relating to a genus,
2. applicable or referring to all members of genus or class.’
Neither meaning that [sic] makes sense to describe a line pattern.” (OAS at [5.1])
50. The Opponent also refers to Hardwick-1 at [77], emphasis added:
“I understand the word ‘generic’ usually means a character or feature shared by members of a class or group. Sometimes it can be used to describe an unbranded product. However it is unclear to me what is a generic background.”
51. The Opponent criticises Dr Knight’s interpretation, and asserts that the use of the term leads to clarity issues:
“Dr Knight interprets the phrase ‘generic typically substantially uniform background’ [as it was formerly in the claim] to mean that the background will be ‘substantially uniform and relatively unobtrusive (that is lacking in strong features) compared to the first array’ (Knight para 68). Thus, Knight interprets ‘generic’ to mean ‘relatively unobtrusive and lacking in strong features’. However, this is not the correct meaning of the term.
Applying ordinary rules of claim interpretation, the phrase ‘generic background’ in claim 1 should operate to qualify the type of line pattern but what it means cannot be understood. Even if it could be understood to mean ‘unobtrusive’ and ‘lacking in strong features’ (which we assert it cannot) this would not assist the skilled addressee as these phrases are also vague and unclear. How can the skilled addressee determine whether any particular line pattern is unobtrusive or not, or visually strong or not? These are completely subjective assessments.
Hence, we assert that the term ‘generic’ in claim 1 renders the scope of the claim unclear.” (OAS at [5.3-5.5], emphasis added)
52. Referring to the Experts’ evidence and the specification, the Applicant submits that a generic background is “a background that is essentially non-information bearing, and therefore able to provide an effective reference frame” (AAS at [10(b)]) and points to Macquarie Dictionary for confirmation:
“The correctness of this construction of the claim words ‘generic background’ is further reinforced by considering the plain English meaning of the word ‘generic’. Generic features lack distinctiveness, because they are common among all members of a class: Macquarie Dictionary meaning 1.” (AAS at [11])
53. As best understood, the Applicant appears to be suggesting that a generic background is a background comprising only “[g]eneric features [which] lack distinctiveness, because they are common among all members of a class”, which should mean – common to all backgrounds. Although, it might be theoretically possible that all backgrounds have certain common non-distinctive features, I am unable to clearly identify what those features are. The evidence also appears silent in that respect.
54. On the other hand, it could possibly be argued that since all backgrounds provide reference frames, a generic background is a background providing only a reference frame and nothing more. However, this leads to the uncertainty of what is this “more” that a generic background must not provide. Regarding the provision of “an effective reference frame”, I consider this more related to the evaluation of the performance of the background in a particular design rather than being a feature of the background.
55. In summary, Dr Hardwick is unclear about the meaning of the term “generic background”, whereas Dr Knight provides an interpretation which, in my view, does not appear supported by the ordinary meaning of the word “generic”. I also fail to see how the word “generic” could be ordinarily used to describe “essentially non-information bearing” as submitted by the Applicant.
56. With regards to the expression “wherein the generic background is defined by a line pattern”, I interpret this to mean that a generic background can be defined in a number of ways, one of which is by a line pattern. I have already discussed the interpretation of the term “line pattern”, however it remains unclear whether all line patterns that could define a background would define a generic background, in other words whether “a generic background defined by a line pattern” is any different from simply “a background defined by a line pattern”.
57. Based on the above discussion, I consider that the term “generic background” as used in claim 1 creates ambiguities which cannot be resolved in the context of the claims alone or by reference to the evidence. Having established this, I will attempt to resolve the ambiguities by referring to the body of the specification.
58. The Applicant refers to page 5 of the description for guidance as to the interpretation of the term in question. The text there reads:
“As mentioned above, embodiments of the invention are particularly advantageous where the background defining the [sic] array(s) does not have to be registered with the first array and this can be particularly easily achieved if the background arrays define a respective generic background, for example a line pattern, simple geometric figures, or more complex line structures such as guilloche patterns.
In some cases, the microimage elements of at least two of the arrays may only differ in colour. However, in preferred examples, the microimage elements of the first, second and third arrays further differ from one another by one or more of shape, size and orientation.
The microimage elements of at least the first array may typically comprise icons such as symbols, geometric figures, alphanumeric characters and the like and most preferably provide information. The microimage elements of one or more of the other arrays may also be formed as icons or more generic patterns as mentioned above.” (page 5, lines 12-26, emphasis added)
59. The word “generic” is also mentioned with respect to some of the illustrated examples of a background:
“Figures 18, 19 and 20 show further examples for the background image array. In Figure 18 the array is a generic line pattern, and in Figures 19 and 20 it is an array of geometric shapes. Such generic patterns offer the advantage of multiredundancy if parts of the background pattern are concealed by the first image array and also there is no requirement of registration between the first image area and the background image arrays.” (page 18, lines 14-19, emphasis added)
Figures 18, 19 and 20 are reproduced below.
60. I note that in describing the background or the background pattern, the body of the specification appears to be consistently using the word “generic” to convey the idea that the background does not include any elements or combinations of elements that can be perceived as having any meaning or conveying any information. Therefore, I consider this to be the appropriate interpretation of the term “generic background” as used in claim 1.
61. I also note that the line pattern is presented as one of the examples of a generic background (see Figure 18 in comparison with Figures 19 and 20), hence it appears that a generic background is a broader concept than a background defined by a line pattern.
62. Despite the earlier identified ambiguities in the claim language arising as a consequence of the ordinary meaning of the word “generic”, by referring to the body of the specification I was able to give a clear interpretation of the term “generic background”.
Clarity summary
63. As already mentioned, the Opponent asserts that “the term ‘generic’ in claim 1 renders the scope of the claim unclear” (OAS at [5.5]). I have determined that this is not the case. Besides the use of the word “generic”, the Opponent’s clarity concerns are mainly related to the following:
“Claim 1 recites that the magnified version of the second array of micro-images form a background and the magnified versions of the first array of micro-images is viewed against the background. The meaning of a ‘background’ is clear. The imagery of a background appears behind the imagery of a foreground (Hardwick 1 (71)). However claim 1 also recites that the magnified version of the second image array may appear in front of the magnified version of the first image array. This contradicts the identification of the second image array as constituting a background. These contrary statements cannot be reconciled. The same issue arises in respect of claim 7 which recites that the magnified versions of the second and third micro-image arrays form a foreground [I assume intended to read ‘background’] to the magnified version of the first micro-image array. Yet claim 8 recites that the magnified version of the first micro-image arrays [sic] appears between the magnified versions of the second and third image arrays (Hardwick 1 (71)[)].
If a moire magnification device has two virtual image arrays, one being a line pattern that appears uppermost in front of the other virtual image arrays, it is impossible to determine if such a device does or does not fall within the scope of the claims due to the ambiguity noted above.” (OS at [124-125])
64. I have already discussed this and found that the use of the word “background” does not make claim 1 unclear. The same conclusion applies to claims 7 and 8. Based on my interpretation, I consider that the example device presented by the Opponent immediately above will fall within the scope of the claims, provided it exhibits the other essential features defined in the claims.
65. The Opponent continues:
“If it is important to avoid obscuring the foreground images, it would be important to keep the line pattern in the background. By way of illustration, a line pattern as seen in Figure 18 of the Specification, if used in the foreground, would obscure a second set of images appearing behind it. If an objective of the Opposed Application can only be met by the selection of imagery for the second micro-image array that avoids obscuring the magnified versions of the first micro-image array, then this objective is not met if claim 1 encompasses magnified versions of the second micro-image array appearing in the foreground. This would lead to a inutility objection.” (OS at [127])
Figure 18 is reproduced above.
66. I do not consider that the above argument could lead to the conclusion that claim 1 is not clear. Given that the Opponent does not actually press the lack of usefulness as a ground of opposition (this was also confirmed at the hearing) and no evidence was presented in that respect, I will not consider in any detail whether the claimed invention is useful. I will only observe that the nature and the degree of obscuring would clearly depend on the selection of both the first and the second arrays of microimage elements. Hence even in the case of a background as illustrated on Figure 18, it would appear uncertain that the background necessarily “would obscure a second set of images appearing behind it” in a way that would be perceived as detrimental. In addition, I consider that Figure 18 is just an illustration of the concept and not necessarily a true scaled representation of a particular fabrication design.
67. In summary, I have not established that the claims are not clear.
Novelty under Subparagraph 18(1)(b)(i)
68. The Opponent relies on two prior art documents:
·“UnisonTM Micro-optic Security Film” by Richard A. Steenblik and Mark J. Hurt (exhibit BAH-5, referred to as the Nanoventions Paper and also as D2)
·WO 2005/052650 A2 (exhibit BAH-6, referred to as the Steenblik Application and also as D3)
69. While admitting that some of the features of claim 1 are not disclosed in either of the Nanoventions Paper or the Steenblik Application, the Opponent asserts that these features are not essential:
“The Nanoventions Paper discloses a moire magnification device having each of features (a) to (e), (g) and (h) as we have identified them in paragraph 37 (Hardwick 1 (92-98)). The Nanoventions Paper does not disclose feature (i) which relates to the use of concave mirrors. However, this is an optional feature. The document also does not disclose that the background of virtual images are a ‘generic background’ and that the ‘generic background’ is defined by a line pattern (features f and j).
The Steenblik Application also discloses a device having each of features (a) to (e), (g) and (h) (Hardwick 1 (101-107)).
We assert that features (f) and (j) are inessential features of the claimed invention not withstanding their inclusion in claim 1. Accordingly, whilst these features are not explicitly disclosed in either of the Nanoventions Paper or the Steenblik Application, each application nonetheless anticipates at least claim 1 of the Specification.” (OS at [112-114], emphasis added).
70. The features labelled as (f) and (j) in paragraph [37] of the Opponent’s Summary are reproduced below (emphasis added):
“f) such that the magnified version of the first array of microimage elements is viewed against a generic background defined by the magnified version of the second array of microimage elements,”
“j) wherein the generic background is defined by a line pattern.”
71. For the purpose of deciding on novelty, I will first consider whether the above features are essential features of claim 1 or not. If I conclude that these features are not essential, then I will need to consider the disclosure in the Nanoventions Paper and the Steenblik Application relevant to the essential features of claim 1. Alternatively, if I find that any one of these features is an essential feature, then claim 1 would not be anticipated by the Nanoventions Paper and by the Steenblik Application as the Opponent admits that neither of these features is disclosed.
72. The Opponent explains:
“Turning first to the feature of a ‘generic background’ there is uncertainty as to what the term means. A ‘generic background’ could be interpreted to mean a non-descript background. At page 5, lines 15-16 of the Specification, it is stated that a line pattern is an example of a generic background. In the context of this Specification, it is apparent that a line pattern is a generic pattern and therefore the feature of a ‘generic background’ is redundant.
This leaves a consideration of feature (j).” (OS at [116-117], emphasis added)
The Opponent then provides further explanations as to why the feature of a background defined by a line pattern is not an essential feature.
73. I consider that a redundant feature is a feature that does not affect the scope of the claim and hence if omitted, the scope would remain unchanged. In addition, I have already considered the interpretation of the terms in question and concluded that a generic background is a broader concept than a background defined by a line pattern. Following from this, I could agree with the Opponent that the feature defining that the background is generic would be redundant, but only if the scope of the claim is properly limited by the feature that this background is defined by a line pattern or, in other words, if the feature of defining the background as a line pattern is essential. If this feature is indeed not essential, as the Opponent asserts, then the feature of the background being generic would not be redundant and it needs to be determined if it is essential or not. It does not appear that the Opponent has attempted to do this.
74. Indeed when discussing the feature defining the background as a line pattern, they state:
“A line pattern may be provide [sic] an attractive background. It may contrast with the shape of the virtual images in the foreground and thereby highlight the foreground images. Being simple and repetitive, a line pattern may not visually interfere with the foreground images. Despite these advantages, the selection of a line pattern still comes down to a design choice – it goes to the aesthetics of the device. It does not materially affect the way that the moire magnification device of claim 1 works. Indeed, the invention works equally well with other types of background patterns as illustrated in figures in the Specification.” (OS at [119], emphasis added).
75. Firstly, the Opponent does not refer to any part of the specification or the evidence suggesting that “the invention works equally well” with the other illustrated backgrounds (including the one on Figures 2A-2C which could potentially be considered as not generic due to the presence of graphical elements that could be interpreted as icons of stars). Dr Hardwick does not go any further than to state:
“The specification makes it clear at page 12, lines 16 to 19 that the device of Figures 2 to 4 is acceptable as it is insensitive to uncontrolled manufacturing variations in the register of the first icon array to the second array.
I also note that at page 5, lines 24 to 26 it is stated that the micro-image elements of the arrays other than the first array could be formed as icons or more generic patterns. Hence, I am told that forming the background from images other than a line pattern will work.” (Hardwick-2 at [8-9], emphasis added)
76. Secondly, the specification illustrates at least on Figures 19 and 20 other types of background patterns which are clearly described as generic backgrounds (page 18, lines 14-19, quoted earlier). Therefore, even if I were to accept the Opponent’s submissions, this could only be to the extent that “the invention works equally well” with other illustrated generic backgrounds. However, even if I do this, it would be of no assistance in deciding whether the feature of the background being generic itself is essential or not.
77. The only arguments by the Opponent which, although provided again in the context of the background being defined by a line pattern, could also be applicable to the feature of the background being generic are:
“As we have noted, the Specification clearly tells the reader that it is the arrangement of the micro-image arrays and the resultant magnified images of the arrays appearing in different planes that avoids the need for mutual registration… The selection of any pattern has no effect on the apparent depth of the virtual images.
As the positions of the virtual images in each plane constantly change on changing the angle of the device, there is no point in fixing the position of one virtual image relative to another in a different plane. Again, the choice of image has no bearing on this issue.” (OS at [117-118])
78. In general, the claimed invention relates to a moiré magnification device having two arrays of microimage elements, the magnified versions of which appear at different depths, one of them viewed against a background defined by the other and moving with respect to the background on tilting the device. In such a device, I find it difficult to accept that the appearance of the microimage elements would not be relevant to the perceived interaction of the two magnified versions and the overall visual effect created by the device (see e.g. the description at page 5, lines 12-17 as quoted earlier). In addition, it was acknowledged by Dr Hardwick that a generic background (e.g. in the form of a line pattern, but also generally where “the background is simple and does not convey any information”) could be advantageous for a device of this type (Hardwick-1 at [112]). Importantly, I note that moiré magnification devices work by creating specific visual effects, hence affecting the overall visual effect does affect the working of the device. Based on this, I have no reasons to consider that the feature of the background being generic does not materially affect the working of the invention, hence I conclude that feature (f) is an essential feature of claim 1.
79. While I agree with the Opponent that the selection of a particular appearance of the images may not affect the general operating principle of moiré magnification devices and the apparent depth of the virtual images; as explained above, in the context of the present invention, I do not consider this sufficient to conclude that the visual appearance of the images does not materially affect the working of the invention.
80. As I already mentioned, the Opponent admits that feature (f) (i.e. the feature of the background being generic) is not disclosed in the prior art documents relied on by them (i.e. the Nanoventions Paper and the Steenblik Application), hence I do not consider that claim 1 is not novel. In addition, given my earlier interpretation of the word “background”, it could be arguable whether either of these documents discloses that the magnified version of the first array is viewed against a background defined by the magnified version of the second array; however I do not need to decide this.
81. In light of the above, I also do not need to decide conclusively whether feature (j) (i.e. the generic background defined by feature (f) being defined by a line pattern) is an essential feature or not.
Novelty summary
82. I have not established that claim 1 is not novel. Claims 2 to 29 are ultimately appended to claim 1 and add further features to those defined in claim 1, hence I have no reason to consider that any of these claims are not novel. Therefore in conclusion, I have not established that any one of claims 1 to 29 is not novel.
Inventive Step under Subparagraph 18(1)(b)(ii)
83. The test for obviousness was developed in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12; (1981) 148 CLR 262 (Wellcome Foundation):
“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.” (at [45], emphasis added)
84. In considering the question of what constitutes “a matter of routine”, in Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59; (2002) 212 CLR 411; (2002) 194 ALR 485; (2002) 77 ALJR 398, it was stated at [53]:
“That way of approaching the matter has an affinity with the reformulation of the ‘Cripps question’ by Graham J in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd. This Court had been referred to Olin in the argument in Wellcome Foundation. Graham J had posed the question:
‘Would the notional research group at the relevant date, in all the circumstances, which include a knowledge of all the relevant prior art and of the facts of the nature and success of chlorpromazine, directly be led as a matter of course to try the -CF3 substitution in the “2” position in place of the -Cl atom in chlorpromazine or in any other body which, apart from the -CF3 substitution, has the other characteristics of the formula of claim 1, in the expectation that it might well produce a useful alternative to or better drug than chlorpromazine or a body useful for any other purpose?’ (emphasis added)
That approach should be accepted.” (original emphasis, references omitted)
85. In Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) [2007] HCA 21; (2007) 235 ALR 202; 81 ALJR 1070, it was stated:
“In Alphapharm, this Court reiterated that ‘obvious’ means ‘very plain’, as stated by the English Court of Appeal in General Tire & Rubber Co v Firestone Tyre and Rubber Co Ltd. The majority in Alphapharm also confirmed that the question of whether an invention is obvious is a question of fact, that is, it is what was once a ‘jury question’. Broadly speaking, the question is not a question of what is obvious to a court. As well as being a question of fact, the question of determining whether a patent involves an inventive step is also ‘one of degree and often it is by no means easy’, because ingenuity is relative, depending as it does on relevant states of common general knowledge….
Further, as recognised in Beecham Group Ltd’s (Amoxycillin) Application, as a basic premise, obviousness and inventiveness are antitheses and the question is always ‘is the step taken over the prior art an “obvious step” or “an inventive step”’? An inventive step is often an issue ‘borne out by the evidence of the experts’. There is no distinction between obviousness and a lack of inventive step. A ‘scintilla of invention’ remains sufficient in Australian law to support the validity of a patent. In R D Werner Lockhart J stated that there must be ‘some difficulty overcome, some barrier crossed’. This is consonant with older authorities in the United Kingdom which recognised that some inventiveness was required to distinguish patentable advances over the prior art from advances which ‘any fool’ could devise. It also accords with the requirement in the United States that for an invention to be ‘non-obvious’ it must be ‘beyond the skill of the calling’.” (at [51-52], emphasis added, reference(s) omitted)
86. It is important to note that obviousness is a question of fact that is to be established by evidence.
87. With respect to the approach to determining obviousness in the present case, the Opponent comments:
“We submit that a conclusion of obviousness is [sic] respect of the subject matter of the claims can be reached on a comparison of this subject matter with the common general knowledge and applying the principles set out in Apotex Pty Ltd v Sanofi-Aventis and noted in paragraph 58. This overcomes any uncertainties that may arise with the proper characterisation of the problem when seeking to apply a reformulated cripps question. Nevertheless, in these submissions we apply both approaches to the inventive step question.” (OS at [63])
88. The Applicant appears to agree:
“The Applicant agrees with CCL [the Opponent] that this is not a case where it is necessary to test obviousness by adopting a problem/solution approach: CS [63].
One issue with the problem/solution approach in the present case is that there are, in truth, two problems that the claimed invention addresses…” (AS at [108-109])
89. In light of the above submissions, I consider it important to emphasise what Aickin J noted in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19; (1977) 137 CLR 228, (emphasis added):
“I have set out these answers in full because they seem to me to state in relation to the present patent very clearly the application of the well-known principle that subsequent analysis of the invention – ‘the dissection of the invention’ – is not often helpful in resolving the question of obviousness.”
90. In that respect, when properly applied, the problem-solution approach has the clear benefit of providing a structured approach that largely avoids the possibility for undesirable ex post facto analysis of the claimed invention.
The problem
91. In applying the test of Wellcome Foundation, I need to identify the problem solved by the claimed invention.
What the specification describes as the problem
92. In the section “Background”, on page 2, lines 6-12, the description states:
“The problem with the known devices, however, is that it is very difficult to achieve multicolour effects in which two or more images are obtained in different colours. This is primarily because the difficulty of printing two microimage arrays in mutual register with one another but in different colours since this would require separate print runs.
It is desired to address or ameliorate one or more disadvantages or limitations associated with the prior art, or to at least provide a useful alternative.”
93. In the section “Detailed Description”, it is further explained:
“We have realised that it is possible to obtain multi-coloured images in a moiré magnification device by arranging the microimage arrays such that the resultant magnified versions of the arrays appear at different depths or in different planes when viewed. This avoids the need for mutual registration.” (page 4, lines 13-16)
“As mentioned above, embodiments of the invention are particularly advantageous where the background defining the [sic] array(s) does not have to be registered with the first array and this can be particularly easily achieved if the background arrays define a respective generic background, for example a line pattern, simple geometric figures, or more complex line structures such as guilloche patterns.” (page 5, lines 12-17)
94. It is helpful to note that the present Application is related to Australian application 2011222715 (the Related Application, now a granted patent) via a common priority document GB 1003397.5 filed on 01 March 2010. The two Australian applications have identical titles “Moiré magnification device” and the problem formulation quoted above is nearly identical to the one found in the section “Background” of the Related Application:
“One problem with the known devices, however, is that it is very difficult to achieve multicolour effects in which two or more images are obtained in different colours. This is primarily because the difficulty of printing two microimage arrays in mutual register with one another but in different colours since this would conventionally require separate print runs.” (the Related Application, page 2)
95. The two applications diverge in that the Related Application proposes a different solution to the so formulated problem:
“By arranging the different coloured microimage elements in two different, laterally offset arrays, and arranging for an interruption zone to be perceived between the two magnified versions of the arrays, the optically distracting effects arising from lateral mis-register +/- Σ between the two colours can be controlled and reduced to an acceptable level or eliminated entirely.” (the Related Application, page 6)
96. On 07 September 2017, I issued a decision on the Related Application with respect to an opposition to grant by the same Opponent, the decision being CCL Secure Pty Ltd (formerly Innovia Security Pty Ltd) v De La Rue International Limited [2017] APO 46 (the Related Decision). Given that the two applications are closely related, I consider it worthwhile to discuss some of the findings in the Related Decision where appropriate in this decision.
What the Experts understand to be the problem
97. With respect to the problem formulated in the specification on page 2, lines 6-12 quoted above, Dr Hardwick comments:
“I agree that if separate print runs are undertaken to print a micro-image array, it can be difficult to ensure that the print runs are in mutual register. This was appreciated by me in March 2010. Having stated this problem, I understand that the aim of the invention in '720 [the Application] is to address it and to provide a method of separately printing micro-image arrays that are in mutual register. There is no other problem identified in the introductory passages in '720.” (Hardwick-1 at [62], emphasis added).
“The second point I wish to raise is that what is identified as the invention does not at all address the problem identified at page 2, lines 6-10. Where a moire magnification device has multiple arrays that are projected in different planes that overlap, then of course it is the case that strict control of registration of the different image arrays is no longer needed... The position of each image in one array changes in relation to the position of each image in the other array. Consequently, strict registration between the arrays is not needed. This would have been apparent to anyone when combining two or more image arrays in a single device, the magnified image of each appearing at a different depth. However this ‘solution’ does not overcome the stated problem. Rather, it is a known configuration for a moire magnification device that does not have the problem.” (Hardwick-1 at [69])
98. When presented with an extract of the Application which appears to consist of the text of the section “Background” with its last sentence removed (exhibit MK-3), Dr Knight considers that:
“In the last paragraph of the extract, it refers to the difficulty of achieving multicolour effects because of the difficulty in printing two microimage arrays in mutual register but in different colours because it requires separate print runs. This is the problem I described in paragraph 39(b) above.” (Knight at [47])
99. The relevant parts of the above mentioned paragraph [39] of Knight are reproduced below:
“Mutual registration may be difficult to achieve. The smaller the images are, the more difficult it becomes. If the microimages in one array are, for example, red A's and the microimages in the other array are, for example, blue B's, at the priority date it would require, in principle, either:
(a) …; or
(b) Using two printing mechanisms and printing all of the A's in red first, followed by all of the B's in blue. The two printing mechanisms need to be tightly locked together so that the A's and B's are correctly positioned. The locations of the A's and B's with respect to each other, both laterally and longitudinally, need to be controlled to within an acceptable tolerance.”
100. Having reviewed the full Application, Dr Knight considers that:
“The solution to the problem identified in the extract MK-3 is to provide a second array of microimage elements (a background) which is defined by a line pattern. In this situation, there is no need for mutual registration between the two microimage arrays because when the background is defined by a line pattern, the interference upon tilting the device does not result in an image being obscured. By using one set (or more than one set) of images as a background whereby the background is defined by a line pattern, it provides a reference frame against which the other set of images is assessed. Accordingly, this also obviates the need to have mutual registration for the purpose of obtaining a consistent effect. As is described on page 12, lines 16 to 19 of the Opposed Application, it is clear that the Opposed Application is aimed at addressing the problem described in the extract by developing a solution that is insensitive to uncontrolled manufacturing variations in the registration of the first icon array to the second array.” (Knight at [49])
101. In the evidence in reply, Dr Hardwick reaffirms his position with respect to the problem:
“Dr Knight states in paragraph 49 that the solution to the problem identified at page 2, third paragraph of '720 is to provide a second array of micro-image elements which is defined by a line pattern. I note that the ‘solution’ of two different arrays of microimages at different visual depths does not overcome the difficulty of how to print two or more images in different colours in register. This is what I understand the problem to be. Further, I note that prior to the amendment to '720, the broad solution presented in '720 was not confined to the choice of any particular background for the device…
The ‘solution’ was achieved without the need for a line pattern as the background. For example, in Figures 2 to 4 a device is illustrated that has a series of stars as the background pattern. In this device there is no adverse effects from the images of the ‘5’ and the stars overlapping. The specification makes it clear at page 12, lines 16 to 19 that the device of Figures 2 to 4 is acceptable as it is insensitive to uncontrolled manufacturing variations in the register of the first icon array to the second array.
I also note that at page 5, lines 24 to 26 it is stated that the micro-image elements of the arrays other than the first array could be formed as icons or more generic patterns. Hence, I am told that forming the background from images other than a line pattern will work.” (Hardwick-2 at [7-9], emphasis added)
102. I discussed a similar issue in the Related Decision and concluded that:
“The specification explains the difficulties in achieving multicolour optical effects of two or more images with the difficulties of achieving mutual registration of the colours during the separate print runs. The latter difficulties (which I accepted as part of the common general knowledge) result in uncertainties or variations in the relative positions of the images of different colours with respect to each other which may lead to visually confusing magnified images. Different device designs will be affected to a different degree by the difficulties of colour registration (see e.g. Knight at [50, 84-85]), hence multicolour devices could potentially be improved by improving the registration when printing in different colours, by developing a design that is less susceptible to the mis-registration, or a combination of both.” (the Related Decision at [86], emphasis added)
103. I consider that the above discussion in the Related Decision is equally applicable to the present opposition and I conclude that in focussing on only one of the possible ways of resolving the issues associated with colour registration (i.e. the provision of “a method of separately printing micro-image arrays that are in mutual register”), Dr Hardwick has provided too narrow formulation of the problem to be solved.
104. In addition, I note Dr Hardwick’s comments that the claimed invention does not solve the problem he formulated. I consider that this is a further confirmation of my view that Dr Hardwick’s formulation of the problem cannot be the correct one for the obviousness analysis.
The parties’ submissions
105. With respect to the problem, the Opponent submits:
“We turn next to approaching the obviousness question by applying the reformulated cripps question. What is the problem that is solved? In the [Related] Decision, the problem is identified at paragraph [90] as follows:
how to provide a moire magnification device where two or more images of different colours are used, where the different colours are applied in separate print runs resulting in certain mis-register between the different colours, the device, in use, not exhibiting clearly noticeable distracting visual effects due to this mis-register.
The Specification at page 2 lines 6-10 identifies the same problem as set out at page 2 of the Specification of 2011222715 [the Related Application]. We therefore submit that the identification of the problem above is relevant to this proceeding.” (OS at [89-90])
106. On the other hand, the Applicant argues that:
“One issue with the problem/solution approach in the present case is that there are, in truth, two problems that the claimed invention addresses:
(a) the absence of CGK techniques that could achieve mutual registration of microimage elements at the priority date; and
(b) the problem of interference that arises if the problem of mis-registration is sought to be overcome by arranging the microimage arrays such that the magnified versions of the images appear at different depths.
The issue of two problems did not arise in CCL Secure Pty Ltd v De La Rue International Limited [2017] APO 46 [the Related Decision], where the Delegate referred to, and relied upon, substantially different content not present in the Patent Application to frame the problem in the terms appearing at [90]: see e.g. the Delegate's reasons at [87] and [88].” (AS at [109-110], original emphasis)
107. With respect to the question of the two problems, the Applicant acknowledges that problem (b) occurs only “if the problem of mis-registration is sought to be overcome by arranging the microimage arrays such that the magnified versions of the images appear at different depths”. Hence the two problems are not independent and problem (b) could be characterised as a secondary issue which occurs only when a particular avenue for solving the (primary) problem is selected. This secondary issue, if well known in the art or easily recognisable by the person skilled in the art, might potentially detract from selecting that particular avenue. In addition, the claimed solution to the secondary issue may or may not be obvious. Therefore, while I need to bear in mind this secondary issue and give it a due consideration, this should not prevent me from formulating the problem for the purpose of inventive step analysis.
108. In addition, similarly to the present case, in the Related Application, there were two issues (or problems) that the claimed invention solved, although both issues were ultimately caused by the same technological limitations of colour mis-registration. The first one related to the difficulties in achieving multi-colour optical effects of two or more images; the second one was the issue of possible overlap when a side-by-side arrangement of two arrays of a different colour was proposed as an avenue for solving the first issue (see the Related Decision at [82-92]).
109. Relevantly to the present opposition, at the hearing, the Applicant suggested that if one is to take the problem-solution approach, then the problem is as stated in the Application, however the interference problem should also be taken into account.
The formulation of the problem
110. The evidence suggests that at the priority date, “there was a strong motivation to create interesting visual effects in security devices generally in order to generate a ‘wow’ factor and stimulate interest in the device and how it could be used” (Hardwick-1 at [48]). In addition, Dr Knight is discussing the requirements for reliability and consistency of the optical effect of the moiré magnification devices in the context of their effectiveness as security devices (Knight at [38, 40]). Although the device claimed in claim 1 is not limited to security applications, in general, moiré magnification devices rely on specifically designed visual effects to achieve their visual impact (or “‘wow’ factor”). It is clear that this visual impact would be diminished or compromised by the potential presence of undesirable optical “side-effects” as these would affect the observation clarity and perception of the specifically designed visual effect.
111. In that regard, I also consider the clearly noticeable uncontrollable random variations in the visual appearance between different devices of the same production design and specifications (e.g. due to manufacturing errors and tolerances) as a type of unintended “side-effect” which would be desirable to minimise as otherwise the so produced devices would have limited useability. As one example, such an uncontrollable random variation could be caused by the mutual colour registration tolerances discussed in the Application. It is also clear that the negative influence of the “side-effects” is a matter of degree or magnitude. Hence logically, regardless of the problem to be solved, a general desire in the art would be that the moiré magnification device proposed as a solution must not exhibit clearly undesirable and distracting optical “side-effects”, or at least must attempt to minimise their magnitude and the way in which they might affect the visual appearance and overall impact of the device.
112. In addition, in the context of the Application, I consider that the technological limitations in achieving colour registration, per se, are better characterised as the cause for the problem, rather than the problem itself. The problem is more broadly related to the manifestation of these technological limitations in the reduced impact and general useability of the multi-colour moiré magnification devices due to the undesirable “side-effects” present as a consequence of these limitations.
113. Summarising the discussions on the problem so far and in light of the explanations presented in the specification (in particular at page 2, lines 6-12 and page 4, lines 13-16, both quoted above), I consider that the problem to be addressed by the Application is very similar to the one I formulated in paragraph [90] of the Related Decision. Hence for the purpose of inventive step analysis, I will formulate the problem as how to provide a moiré magnification device where two or more images of a different colour are used, the device, in use, not exhibiting undesirable distracting visual effects to a degree clearly affecting the overall impact of the device, given that the commonly used production technology results in a certain degree of mis-register between images of a different colour.
114. The invention defined in claim 1 does not solve the problem by reducing the degree of mis-register, e.g. through improvements in the production technology. Instead, it solves the problem by adopting a design where the two different colours are provided on microimages in two different respective arrays, the magnified versions of which appear at different depths, thus avoiding the need for precise mutual colour registration, but making the device susceptible to the undesirable secondary issue of image interference (or overlap at certain viewing angles). To reduce the negative impact of this secondary issue, the microimage arrays are designed such that the magnified version one array defines a generic background against which the magnified version of the other array is viewed, wherein the generic background is implemented as a line pattern.
115. I note the Opponent’s submissions that this secondary issue is, in fact, non-existent due to the different colours of the two potentially overlapping magnified images as well as the repetitive nature of the magnified images combined with the fact that being at different depths, not all images would be overlapping at the same viewing angle. As I already mentioned, the negative influence of the “side-effects” is a matter of degree or magnitude. This also applies to the effect of overlapping. While I can agree with the Opponent to the extent that the interference issue may be somewhat tolerable, the common sense (also supported by the evidence, see e.g. Hardwick-1 at [83 and 112]; Knight at [40, 49, and 78]) clearly suggests that having a generic background implemented as a line pattern mitigates the issue to a higher degree in comparison with devices where all images are intended to convey some meaning or information.
The person skilled in the art and the common general knowledge
116. The hypothetical person skilled in the art and the common general knowledge are well established concepts and I do not consider it necessary to discuss the relevant Authorities.
The person skilled in the art
117. According to the Opponent:
“In the present case, the skilled person is someone having expertise in the field of moire magnification devices and their use as security devices. The relevant field is a highly technical area and people working in the field take care to familiarise themselves with developments by reading patent specifications, published papers and attending conference proceedings.” (OS at [16])
118. The Opponent emphasises the involvement of Dr Hardwick in the relevant field and concludes:
“Importantly, Dr Hardwick is very well placed to give evidence about what was known by his colleagues and approaches they would take to designing a moire magnification device as at the Priority Date as a consequence of his working interactions with colleagues at NPW/NPAL, attending relevant industry conferences and his role on various committees (see for example Hardwick 1 (35)). Accordingly Dr Hardwick is the appropriate person to give evidence in this matter as an expert and as a proxy from the person skilled in the art.” (OS at [18])
119. The Applicant submits that:
“The person skilled in the art would be a person with an interest in, and knowledge of, moiré magnification devices and their use on security documents.
The person would not be inventive, but rather would have a reasonable knowledge of the area gained from attendance at conferences, review of textbooks and relevant published papers.
…
Dr Knight is suitably qualified to give expert evidence that will assist the Delegate to approach the issues from the perspective of the person skilled in the art, having regard to his background noted above.” (AS at [14-15, 17])
120. I do not see any major disagreements between the parties. I generally agree with their submissions and, in light of the problem to be solved, I consider that the person skilled in the art would have a good understanding of the operation of moiré magnification devices and experience in their design. I also consider that both Dr Hardwick and Dr Knight are qualified to give evidence in this opposition, however some caution should be exercised in weighing the evidence to account for the Experts’ inventive disposition (see Hardwick-1 at [11]; Knight at [9]).
121. Since the Application and the Related Application are in the same technical field and I found that they are addressing very similar problems, I do not consider that there should be any material differences with respect to the person skilled in the art (see e.g. the Related Decision at [50-52]).
The common general knowledge
122. In the Related Decision, I considered the question of the common general knowledge based on the evidence I had before me provided by Dr Jolic and Dr Knight. The relevant evidence is presently provided by Dr Hardwick and the same Dr Knight. Although different evidence may well lead to a different conclusion, given the above mentioned lack of material differences with respect to the person skilled in the art, I consider it justified to discuss my findings in the Related Decision with respect to the common general knowledge.
123. In that decision, with respect to some specific disclosures, I stated that “[i]t appears that both Experts agree that the 1000 Krona banknote using the Motion thread and the Drinkwater patent (at least its existence) were well known at the priority date” (the Related Decision at [62]). I also stated that “[w]ithout conclusively deciding the issue, I am prepared to accept that the Nanoventions paper and D3 were also well known in the art” (the Related Decision at [64]).
124. In addition to the 1000 Krona banknote, the immediately preceding paragraph mentions three prior art documents:
·“the Drinkwater patent” which refers to US 5712731 A, presently filed as exhibit BAH-3 and also referred to as D1;
·“the Nanoventions paper” which is the same Nanoventions paper mentioned above in the novelty discussion; and
·“D3” which refers to WO 2006/125224 A2, a document not presently in evidence, but having the same applicant and not entirely dissimilar (e.g. Figures 1-33 appear identical) to the Steenblik Application mentioned above in the novelty discussion.
125. In the Related Decision, I also found that:
“Based on the evidence on file, without conclusively deciding the issue as ultimately this will not affect my decision, I am prepared to accept that the following was part of the common general knowledge in the art at the priority date:
·The theory and operation principles of the moiré magnification devices as well as their use as security devices (the first sentence of section “Background” of the specification; Jolic-1 at [19-25, 29]; Knight at [24-28]; Jolic-2 at [74]);
·The incorporation of security devices including moiré magnification devices as threads in documents where parts of the threads can be viewed through windows in the document (Jolic-1 at [29, 104]; Knight at [193]; Jolic-2 at [16]);
·The potential attractiveness of using multi-colour devices and the use of images of a different colour in moiré magnification devices (Jolic-1 at [34]; Knight at [25, 39]; Jolic-2 at [71]);
·The issues of printing tolerances typical to the commonly used printing techniques and leading to mis-registration of images printed in different colours (Jolic-1 at [32]; Knight at [42-44]; Jolic-2 at [7-9, 83]).” (the Related Decision at [71])
I note that the second dot point above is not relevant to the present invention.
126. Having reviewed my findings in the Related Decision, I conclude that, in general, the present evidence does not appear inconsistent with those findings. The present evidence suggests that some specific prior art documents were known to both Experts. Without conclusively deciding the issue (as later it will become apparent that this will not affect my decision), I am prepared to accept that these prior art documents, as listed below, were so well known and generally accepted in the art that formed part of the common general knowledge:
148. For completeness, I also note that, as far as I can ascertain from exhibit MCH-1, the two image arrays of Dr Hutley’s device each have images in different colours (red and black for one array, and yellow-orange and black for the other). Hence this device is not representative of the design concept of the present invention, as (due to the much larger scale) magnified images of different colours do appear at the same depth without any noticeable detrimental effects associated with possible colour mis-registration issues.
149. At the hearing, the Opponent submitted, in essence, that replacing whatever background is there with a line pattern is similar to the case of replacing a one-start thread with a three-start thread in a device having a combination of integers which was found not inventive in Fallshaw Holdings Pty Limited v Flexello Castors and Wheels Plc [1993] FCA 340; 26 IPR 565. The Opponent pointed my attention to several passages of this decision, including at page 570:
“…inventiveness must lie, if at all, in the improvement which is claimed to have been effected in respect of one of the integers. Only if a change to an integer so transforms the combination as to establish what is truly a new mutual relation in the operation of the integers will it be correct to see the improved result as a new combination.”
150. Even if I adopt the Opponent’s view that the only change is in the background of the device (assuming that the known prior art devices did have a background, which is not entirely clear), based on my previous discussions, I do not consider that providing a generic background as claimed is a change to only one integer of the device without further consequences. It is the interaction of the magnified images forming the (generic) background with the magnified images of the other array that determines the optical effect and visual impact, hence the working of the moiré magnification device (as distinct from the physical principle of its operation which may be the same). Therefore, I consider the present case sufficiently distinguished from the above Federal Court Decision.
151. In conclusion, even if I assume the correctness of the Opponent’s position regarding the common general knowledge, including with respect to the Nanoventions Paper and the Steenblik Application being part of it (see e.g. OS at [104]), I am still not satisfied to the required standard of proof that claim 1 is obvious. This explains my earlier statement that I do not have to decide conclusively on what exactly constitutes the common general knowledge, and also means that I do not need to consider inventive step in light of the common general knowledge together with either one of these two documents as pieces of prior art information under subsection 7(3).
Inventive step summary
152. I have not established that claim 1 is obvious. Claims 2 to 29 are ultimately appended to claim 1 and add further features to those defined in claim 1, therefore I have no reason to consider that any one of these claims is obvious.
153. In conclusion, I have not established that any one of claims 1 to 29 does not involve an inventive step.
Whether Claims Define the Invention under Paragraph 40(2)(b) and Whether They Are Fairly Based under Subsection 40(3)
154. The Opponent submits:
“Claim 7 introduces the feature of a third micro-image array in a colour different to the colours of the first and second micro-image arrays. However, the claim fails to recite that the images generated from the third micro-image array appear at a different depth to the images of the second micro-image array. They could appear in the same image plane. The same issue arises with respect to claim 9.
This leads to a number of difficulties with these claims. Clearly, arranging the pitches of the micro-image arrays and the micro-focusing arrays so that the virtual images generated in respect of each array appear at a different depth is a key element of the invention. By failing to specify that the virtual images of the second and third microimage arrays appear at a different depth to each other, claims 7 and 9 omit this key element. In this way, the claims travel beyond the matter disclosed in the Specification (adopting Barwick CJ's test for fair basis expressed in Olin Corp v Super Cartridge Co Pty Ltd (1977) 1A IPR 197 at 200). Consequently, these claims fail to define the invention in contravention of section 40(2)(b) and are not fairly based on the Specification in contravention of section 40(3).” (OS at [122-123], emphasis added)
155. Claims 7 and 9 are reproduced below:
“7. A device according to any of the preceding claims, further comprising:
iv) a corresponding third array of microimage elements, in a third colour different from the first and second colours, and located in the plane substantially aligned with the focal plane of the micro-focusing elements,
wherein where the micro-focusing elements comprise concave mirrors, at least two of the first, second or third arrays of microimage elements are at least partially translucent,
wherein the pitches of the micro-focusing elements and third array of microimage elements are such that they cooperate to generate a magnified version of the image elements of the third array due to the moiré effect and such that the magnified version of the first array of microimage elements is viewed against a generic background defined by the magnified versions of the second and third arrays of microimage elements,
the magnified version of the first array of microimage elements exhibiting movement relative to the generic background when the device is tilted.”
“9. A device according to claim 7, wherein the pitches of the array of micro-focusing elements and first, second and third arrays of microimage elements are chosen so the magnified version of the image elements of the first array appear above the magnified versions of the image elements of the second and third arrays.”
The relevant law and whether claims define the invention
156. The relevant parts of section 40 state:
“(2) A complete specification must:
…
(b) where it relates to an application for a standard patent—end with a claim or claims defining the invention; and
…
(3) The claim or claims must be clear and succinct and fairly based on the matter described in the specification….”
157. Reviewing the Application, I cannot see any reason to conclude that its specification does not “end with a claim or claims defining the invention”. Claims 7 and 9 are part of the claim set and I consider that these claims are clearly drafted in a way that defines the invention for which the Applicant seeks protection. Therefore, the only question I need to answer is whether claims 7 and 9 are “fairly based on the matter described in the specification”. I also consider that the Opponent’s arguments quoted above are solely directed to the ground of fair basis.
158. In Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58 (Lockwood), the High Court approved the following approach:
“The approach required by s 40(3)
Erroneous principles. The comparison which s 40(3) calls for is not analogous to that between a claim and an alleged anticipation or infringement. It is wrong to employ ‘an over meticulous verbal analysis’. It is wrong to seek to isolate in the body of the specification ‘essential integers’ or ‘essential features’ of an alleged invention and to ask whether they correspond with the essential integers of the claim in question.
‘Real and reasonably clear disclosure’. 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.” (at [68-69], original emphasis, references omitted)
159. The High Court further explained:
“Doric submitted that Olin decided that a claim based on a consistory clause cannot be fairly based. It did not. Rather, as the Patentee submitted, the correct position is that a claim based on what has been cast in the form of a consistory clause is not fairly based if other parts of the matter in the specification show that the invention is narrower than that consistory clause. The inquiry is into what the body of the specification read as a whole discloses as the invention. An assertion by the inventor in a consistory clause of that of which the invention consists does not compel the conclusion by the court that the claims are fairly based nor is the assertion determinative of the identity of the invention. The consistory clause is to be considered by the court with the rest of the specification.
These points are reflected in the statements in an Australian text:
‘Claims found to be inconsistent with the general description of the invention may be invalid as being not fairly based on the matter described in the specification. In order to avoid this possibility a well drawn specification will usually include in the body of the specification one or more formal “consistory statements” setting forth what the patentee considers to be the scope of the invention, such statements often quoting the exact wording of the broadest claims in the specifications. … Such statements will generally follow an introductory portion of the specification, which may describe the technical field of the invention and the problems with the prior art which are to be addressed by the invention. It is important that the introductory part of the specification be worded so as to be consistent with the scope of the invention as defined in the claims and any formal consistory statements.
A statement implying that the invention has a limited field of application or requires as an essential feature something which is not required by the claims may result in a finding that the claims are wider than the invention disclosed in the specification, and are accordingly invalid for lack of fair basis on the matter described in the specification.’” (Lockwood at [99-100], reference(s) omitted)
Fair basis consideration
160. The Opponent states that “claims 7 and 9 omit [the] key element” of “arranging the pitches of the micro-image arrays and the micro-focusing arrays so that the virtual images generated in respect of each array appear at a different depth”. This is due to the fact that these claims fail to define that the magnified versions of the second and the third microimage arrays (which are of a different colour) appear at different depths.
161. Following the above discussion of the law, I need to decide whether a device with an arrangement where the magnified second and third arrays appear in a different colour but at the same depth is “inconsistent with the general description of the invention” including any consistory statements.
162. To support their view that claims 7 and 9 are fairly based, the Applicant refers to the parts of the specification where the text could be considered as serving the purpose of a consistory statement as it is broadly related to the wording of claims 7, 8, and 9 (AS at [127]); and argues that this text in the description supports an “arrangement [that] would include the second and third arrays appearing at the same depth (that depth being below the level of the magnified images in the first array)” (AS at [128(b)]). In the same paragraph, the Applicant also refers to Knight at [61, 66], however I note that in these paragraphs, Dr Knight does not address the text of the description, but simply discusses the scope of the corresponding claims which is not in question here.
163. Since the specification provides no way of reducing the degree of colour mis-registration, it is clear from the problem discussion earlier in this decision that, in the arrangement in question, the microimages of the second and third arrays, being in a different colour, will not be in good register. However, the magnified elements of these two arrays define the generic background against which the magnified elements of the first array are viewed. Therefore, unless some additional measures are in place, the two-colour generic background itself would apparently suffer from the same problem that the present invention attempts to solve, in that it will exhibit uncontrollable random variations in its appearance. I am unable to identify any such additional measures in the specification.
164. Indeed, in contrast, the beginning of the section “Detailed Description” states:
“We have realised that it is possible to obtain multi-coloured images in a moiré magnification device by arranging the microimage arrays such that the resultant magnified versions of the arrays appear at different depths or in different planes when viewed. This avoids the need for mutual registration.” (page 4, lines 13-16)
165. I will also discuss the part of the specification relied on by the Applicant (AS at [127]) to support their view that claims 7 and 9 are fairly based:
“One or more further arrays of respective microimage elements in other colours could be provided. For example, in a particularly preferred approach, the device further comprises a corresponding third array of microimage elements, in a third colour different from the first and second colours, and located in the plane substantially coincident (to make consistent with II and III) with the focal plane of the micro-focusing elements, wherein the pitches of the micro-focusing elements and third array of microimage elements are such that they cooperate to generate a magnified version of the image elements of the third array due to the moiré effect and such that the magnified version of the first array of microimage elements is viewed against a background defined by the magnified versions of the second and third arrays of microimage elements, the magnified version of the first array of microimage elements exhibiting movement relative to the background when the device is tilted.
The provision of a third array of, typically identical, microimage elements allows the magnified image elements of each array to appear at different depths relative to each other depending upon the pitches of each array. Thus, in one example, the pitches of the array of micro-focusing elements and the first, second and third arrays of microimage elements are chosen such that the magnified version of the first array of microimage elements appears between the magnified versions of the microimage elements of the second and third arrays.
In another example, the pitches of the array of focusing elements and first, second and third arrays of microimage elements are chosen so the magnified version of the image elements of the first array appear above the magnified versions of the image elements of the second and third arrays.” (page 4, line 19 to page 5, line 9, emphasis added)
166. I will now consider what this text describes as a whole. At the outset, I note that the described benefit of the provision of a third array appears to be solely related to the fact that this allows the magnified image elements of each array to appear at different depths relative to each other. In addition, I consider that the word “thus” following the benefit description is a clear indication that the examples that follow should be considered as specific illustrative implementations exhibiting the benefit (namely, “… the magnified image elements of each array to appear at different depths relative to each other…”), unless the wording of the examples themselves makes it explicit that this is not the case.
167. In the first example immediately following the word “thus”, the three magnified arrays of a different colour would clearly appear at different depths. The second example (referred to as “another example”) does not explicitly specify the apparent relative depths of the second and third magnified arrays. Despite being in a separate paragraph, I still consider that the wording of the above quotation implies an interpretation that this second example is just “another” specific implementation exhibiting the same benefit. Hence, I consider that, in the second example, the magnified second and third arrays should appear at different relative depths below the magnified first array.
168. Further, the specification provides only one example embodiment having generic background formed by two separate microimage arrays of a different colour and this is the third example described with reference to Figures 7 to 9 (reproduced below). I note that these figures illustrate only the second and third arrays that form the generic background. It is clear from Figure 9 and the corresponding explanations in the description that the magnified versions of the two arrays (i.e. the blue circles array and the green circles array, illustrated using solid and dashed lines, respectively) appear at different depths as they move with respect to each other when the viewing angle is changed. It is also clear that if the magnified blue and green circles were to appear at the same depth, this third example (i.e. its background) would suffer from the very same problem caused by colour mis-registration that the present invention attempts to solve.
169. It might be generally possible that the microimage elements of the second and third arrays could potentially be designed such that the generic background defined by a line pattern formed by the two arrays of a different colour is sufficiently insensitive to the problem caused by colour mis-registration, however this would require a new and different solution to the same problem. The specification does not provide such a solution.
170. Having discussed the relevant parts of the specification, I conclude that “the general description of the invention” is limited to designs where the magnified image arrays of a different colour always appear at different depths to avoid the need for mutual registration. I consider that there is no “real and reasonably clear disclosure” of a design with two magnified image arrays of a different colour appearing at the same depth as this appears inconsistent with the general approach to solving the problem associated with colour mis-registration being addressed by the specification.
171. Therefore, I consider that claims 7 and 9 are not fairly based on the specification.
Conclusion and Costs
172. Based on the evidence on file, I failed to establish that the invention defined in any one of the claims lacks novelty or inventive step. I also did not find that the claims are not clear or that they do not define the invention. However, I concluded that claims 7 and 9 are not fairly based on the specification, hence the opposition is successful.
173. I consider that the above identified deficiency can be overcome by suitable amendments to the specification, hence I consider it appropriate to give the Applicant an opportunity to propose such amendments.
174. It is a normal practice that the costs should follow the event and the submissions of both parties, further clarified at the hearing, are generally along these lines (OS at [128]; AS at [134]); although the Opponent mentioned at the hearing that the number of consecutive amendments to the specification should also be taken into account. The opposition is successful on the ground of fair basis. The other four grounds of opposition raised by the Opponent are unsuccessful, however as pointed out by the Opponent, the Application was amended four consecutive times during the opposition period which I consider an indirect indication of the perceived strength of the Opponent’s original case.
175. Based on the above considerations, I will award costs according to Schedule 8 against the Applicant.
Dr V. Z. Kolev
Delegate of the Commissioner of Patents
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