CCL Secure Pty Ltd (Formerly Innovia Security Pty Ltd) v De La Rue International Limited - [2018] APO 9

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
CCL Secure Pty Ltd (formerly Innovia Security Pty Ltd) v De La Rue International Limited [2018] APO 9

Patent Application: 2012322437

Title:Security devices

Patent Applicant:                   De La Rue International Limited
Opponent:  CCL Secure Pty Ltd (formerly Innovia Security Pty Ltd)
Delegate:  Xavier Gisz
Decision Date:  14 February 2018
Hearing Date:  6 December 2017, in Canberra

Catchwords: PATENTS - opposition to the grant of a patent – novelty – inventive step – clear enough and complete enough disclosure– support – utility – opposition unsuccessful – costs awarded

Representation: Counsel for the applicant: Chris Burgess
Patent attorney for the opponent: Adrian Crooks of Philips Ormonde Fitzpatrick

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2012322437

Title:Security devices

Patent Applicant: De La Rue International Limited
Date of Decision: 14 February 2018
DECISION
The opposition is unsuccessful on all grounds. Subject to appeal, I direct that the patent application proceeds to grant.
Costs according to Schedule 8 are awarded against the Applicant up to the day when the amendments to the specification were allowed (7 March 2017) and against the Opponent from the day after the allowance of the amendments (8 March 2017).
REASONS FOR DECISION
Background

The matter relates to patent application 2012322437 (the Application) in the name of De La Rue International Limited (the Applicant). The Application is a national phase of international application PCT/GB2012/052522 published as WO2013/054119. The Application claims a priority date of 11 October 2011.
The Application was advertised as accepted on 17 March 2016. A notice of opposition to grant was filed on 17 June 2016 by CCL Secure Pty Ltd (formerly Innovia Security Pty Ltd) (the Opponent). The statement of grounds and particulars was filed on 19 September 2016.
The Applicant requested to amend the specification on 11 November 2016. The amendments were allowed on 7 March 2017.
The evidence in support was completed on 20 December 2016. Evidence in answer was completed on 21 March 2017. The evidence in reply was completed on 18 May 2017.
The Opponent’s written submissions for the hearing were filed on 23 November 2017. The Applicant’s written submissions for the hearing were filed on 30 November 2017. The hearing was held in Canberra on 6 December 2017.
The request for examination in relation to the Application was filed on 15 April 2015. Consequently, substantive amendments of the Patents Act 1990 (the Act) brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (the Raising the Bar Act) apply to the present application.
Evidence
The Opponent’s evidence in support comprises a declaration by Dr Bruce Hardwick filed on 16 December 2016 with exhibits BAH-1 to BAH-8.
The Applicant’s evidence in answer comprises a declaration by Richard Jotcham dated 21 March 2017 with exhibits RBJ-1 to RBJ-5.
The Opponent’s evidence in reply comprises a declaration by Dr Bruce Hardwick filed on 18 May 2017 with exhibit BAH-9.
Specification
The specification (amended on 7 March 2017) ends with 19 claims comprising four independent claims and 15 dependent claims. The independent claims are reproduced below:
1. A security device, comprising:
an at least semi-transparent layer exhibiting a first pattern of integral regions of the layer, wherein the material of the first pattern of integral regions is of a high optical density relative to the material of intervening regions of the layer; and
a colour layer exhibiting a second pattern comprising elements of at least two different colours;
wherein the first and second patterns at least partially overlap one another and are configured such that, when the device is viewed from at least one side, the first and second patterns co-operate to generate an optically variable effect whereby the appearance of the device varies at different viewing angles.
3. A security device, comprising:
an at least semi-transparent layer exhibiting a first pattern of integral regions of the layer having a raised surface profile relative to intervening regions of the layer, the first pattern comprising raised regions each having at least two flank surfaces which are non-parallel to the plane of the device; and
a colour layer arranged to follow the contours of the regions and exhibiting a second pattern comprising elements of at least two different colours, the second pattern being configured such that at least two flank surfaces of each raised region exhibit different colour appearances;
wherein the first and second patterns at least partially overlap one another and are configured such that, when the device is viewed from at least one side, the first and second patterns co-operate to generate an optically variable effect whereby the appearance of the device changes between a first colour and a second colour at different viewing angles.
12. A method of making a security device, comprising:
(a) providing an at least semi-transparent layer;
(b) modifying regions of the at least semi-transparent layer to form a first pattern of integral regions of the layer, wherein the material of the first pattern of integral regions is of a higher optical density relative to the material of intervening regions of the layer; and, before, during or after step (b):
(c) applying a colour layer on one side of the at least semi-transparent layer, the colour layer forming a second pattern comprising elements of at least two different colours;
wherein the first and second patterns at least partially overlap one another and are configured such that, when the device is viewed from at least one side, the first and second patterns co-operate to generate an optically variable effect, whereby the appearance of the device varies at different viewing angles.
13. A method of making a security device, comprising:
(a) providing an at least semi-transparent layer;
(b) modifying regions of the at least semi-transparent layer to form a first pattern of integral regions of the layer having a raised surface relief relative to intervening regions of the layer, the first pattern comprising raised regions each having at least two flank surfaces which are non-parallel to the plane of the device; and, before, during or after step (b):
(c) applying a colour layer on one side of the at least semi-transparent layer, the colour layer forming a second pattern comprising elements of at least two different colours following the contours of the raised surface relief, the second pattern being configured such that at least two flank surfaces of each raised region exhibit different colour appearances;
wherein the first and second patterns at least partially overlap one another and are configured such that, when the device is viewed from at least one side, the first and second patterns co-operate to generate an optically variable effect, whereby the appearance of the device changes between a first colour and a second colour at different viewing angles.
The claims define two inventions; the first invention defined in claims 1 and 12, the second invention defined in claims 3 and 13.
The Opponent identified the following features in claim 1:
1.1 an at least semi-transparent layer exhibiting a first pattern of integral regions of the layer, wherein the material of the first pattern of integral regions is of a high optical density relative to the material of intervening regions of the layer;
1.2 a colour layer exhibiting a second pattern comprising elements of at least two different colours;
1.3 wherein the first and second patterns at least partially overlap one another; and
1.4 are configured such that, when the device is viewed from at least one side, the first and second patterns co-operate to generate an optically variable effect whereby the appearance of the device varies at different viewing angles.
The Opponent identified the following features in claim 3:
3.1 an at least semi-transparent layer exhibiting a first pattern of integral regions of the layer having a raised surface profile relative to intervening regions of the layer, the first pattern comprising raised regions each having at least two flank surfaces which are non-parallel to the plane of the device;
3.2 a colour layer arranged to follow the contours of the regions and exhibiting a second pattern comprising elements of at least two different colours, the second pattern being configured such that at least two flank surfaces of each raised region exhibit different colour appearances;
3.3 wherein the first and second patterns at least partially overlap one another;
3.4 and are configured such that, when the device is viewed from at least one side, the first and second patterns co-operate to generate an optically variable effect whereby the appearance of the device changes between a first colour and a second colour at different viewing angles.
First invention
The first invention, defined in claims 1 and 12 and claims dependent thereon, is a security device with overlapping patterns. The first layer is semi-transparent and has a first pattern made of regions of high optical density. The second layer has a second pattern formed from elements of at least two different colours.
The first and second patterns co-operate to generate an optically variable effect whereby the appearance of the device varies at different viewing angles.
In a preferred embodiment the optically variable effect is achieved by separating the two layers with a spacing layer. Because the layers are separated, the top layer obscures the bottom layer as the device is tilted. This is known as parallax, and more specifically the parallax barrier effect.
A preferred embodiment is shown in Figure 2(a) reproduced below:
Second invention
The second invention, defined by claims 3 and 13 and claims dependent thereon, is a security device with a contoured layer covered with a colour layer. The first layer is semi-transparent and has a first pattern formed by the contours in the layer. The second layer has a second pattern formed by elements of at least two colours and follows the contours of the first layer.
The first and second patterns co-operate to generate an optically variable effect whereby the appearance of the device varies at different viewing angles.
A preferred embodiment is shown in Figure 6 below:
Claim construction
Integral regions of the layer
The Opponent stated:
“Feature 1.1 of claim 1 relates to a first pattern of integral regions of an at least semitransparent layer. The term ‘integral’ has no special technical meaning in the context of security devices. The term would be understood by a skilled addressee to mean that the pattern was part of a single integrated whole along with the semitransparent layer (Hardwick 1 [33]). A skilled addressee would be aware that in the context of security devices, it was well known to apply a coating layer over a printed or foil pattern which had been applied to a substrate. The combination substrate, printing/foil and coating would form a single integral layer which could not readily be separated (Hardwick 1 [43]).”
The Applicant states:
“First, the formation of the pattern integrally within the (at least) semitransparent layer itself provides a testable security feature that is apparent from inspecting the device: Patent Application, p 19b:1-4; Jotcham at [43]. This feature makes the security device more difficult to copy than a standard ink pattern, because the technology for forming patterns integrally within transparent layers is not readily available to counterfeiters: Patent Application, p 5:27-30.”
The word ‘integral’ is relevantly defined in the Macquarie dictionary as follows:
1. of or relating to a whole; belonging as a part of the whole; constituent or component: the integral parts of the human body.
2. necessary to the completeness of the whole.
3. made up of parts which together constitute a whole.
The feature in claim 1 containing the word ‘integral’ is:
“an at least semi-transparent layer exhibiting a first pattern of integral regions of the layer, wherein the material of the first pattern of integral regions is of a high optical density relative to the material of intervening regions of the layer”
The plain meaning of this is that the layer contains regions of high optical density and regions of lower optical density. In other words, the regions of high optical density are embedded within the layer and in between areas of lower optical density. There is no requirement for the regions of high optical density to be formed by modifying the layer. Although this is how the regions are formed in the preferred embodiment of the invention (with the photosensitve layer), and also the invention defined in claim 12, I am not satisfied this specific limitation needs to be read into this feature of claim 1. Thus I have construed the term ‘integral’ by its plain meaning.
Overlap
The word ‘overlap’ is relevantly defined in the Macquarie dictionary as:
1. to lap over (something else or each other); extend over and cover a part of.
I consider that the overlap must be when the objects are viewed from directly above. If this definition were not adopted, it would lead to the absurd result that any two objects could be considered overlapping if viewed from a particular angle.
Co-operation between first and second patterns to form the optically variable effect
The claims define the first and second patterns must cooperate to generate an optically variable effect. That is, the optically variable effect occurs because of the co-operation or interaction between the patterns.
Although the bottom layer may itself be formed from optically variable structure (see page 45 lines 7 to 16 of the description), this is not the feature being claimed. There must also be a distinct optically variable effect generated by the co-operation between the layers.
Pattern
The word ‘pattern’ is relevantly defined in the Macquarie dictionary as:
1. a decorative design, as for china, wallpaper, textile fabrics, etc.
The word ‘pattern’ is given its plain meaning of something more complex than a single simple area of uniformity. Thus a rectangular area of uniform appearance is not a pattern.
OPPOSITION UNDER SECTION 59
Standard of proof
The request for examination of this application was filed after the commencement of the Raising the Bar Act. The standard of proof that applies in this opposition proceeding is therefore the balance of probabilities, as a consequence of subsection 60 (3A) that allows the Commissioner to refuse a patent application if satisfied on the balance of probabilities that a ground of opposition exists.
Grounds of Opposition
The patent was opposed on the grounds that the patent application lacks novelty, an inventive step, manner of manufacture, utility, clear enough and complete enough disclosure, clarity, support, and the claims do not define the invention.
During the hearing the Opponent only pressed the following grounds:
·novelty – s 18(1)(b)(i)  claims 1-6, 11-13, 17-19
·inventive step – s 8(1)(b)(ii)               claims 1-7, 9, 11-13, 17-19
·clear enough disclosure – s 40(2)(a)
·support - s 40(3)  claims 1-9, 11-15, 17-19
·utility – s 18(1)(c)  claims 1-19
Novelty
Under subsection 7(1), an invention is taken to be novel unless it is not novel in the light of the prior art base. Information in a document forms part of the prior art base for the purposes of novelty if it was published before the priority date of a claim.
It is well established that the general test for anticipation is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement”.
This test is satisfied if the alleged anticipation discloses all the essential features of the invention claimed (Nicaro Holdings Pty Limited v Martin Engineering Company [1990] FCA 40). In order to meet this requirement, the prior art “must contain clear and unmistakeable directions to do what the patentee claims to have invented” (The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 at 486).
The opponent alleged the claimed invention lacked novelty and inventive step in light of the following documents:
First invention:
US 2005/0118537 (Lutz)
US 2008/0042427 (Muke)
Second invention:
US 2007/0246932 (Heine)
US 7,630,954 (Adamczyk)
First invention
US 2005/0118537 (Lutz)
First embodiment
The Opponent states in their submissions:
“In its most basic form, the invention of US’537 consists of a structure which includes:
a. a laser-sensitive layer of a certain colour which can be selectively bleached by
laser light to form a pattern; and
b. a background layer consisting of one or more colours (Hardwick 1 [66]).
Having described the basic structure set out above, US’537 goes on to describe various different embodiments of multilayer images which can be formed from this basic structure. One such embodiment is described by reference to figure 14 reproduced below:
In the figure 14 embodiment of US’537, layer 4 has a laser sensitive region 4a in which transparent markings 10 can be created. Layer 5 is generally reflective across its surface however in region 5b has a diffraction pattern. As described in US’537, diffraction pattern 5b is laterally offset from the markings 10 (Hardwick 1 [68]). This is in direct contrast to the embodiment described by reference to figure 13 in which a diffraction pattern is located directly beneath markings 10 (Hardwick 2 [13]).
As a result of the laterally displaced arrangement of the diffraction structure 5b, a different visual effect is presented to a viewer depending on viewing angle. From an angle of view essentially perpendicular to the plane of the image, the viewer sees the combined effect of the markings 10 and the generally reflective surface of layer 5. From a particular angle away from the perpendicular, the viewer will instead see the combined effect of the markings 10 and the diffraction structure 5b (Hardwick 1 [68], Hardwick 2 [12]).”
The Applicant argued that Lutz did not disclose all the features of claim 1 for four reasons.
Firstly, the Applicant argued that the background region 5b would not be able to be viewed through the transparent portion of the marking (10). Because the marking and background layers are offset the angle to view them would be so shallow or acute an angle that it would not be visible.
The description of Lutz states at the last sentence of paragraph 72 (in relation to figures 14a to 14d):
“The laser-treated regions 10 in question thereby become more or less transparent. By virtue of the laterally displaced arrangement of the diffraction structure, depending on the respective viewing angle, it is possible to achieve different effects, in particular different color configurations in the region of the markings 10. It is thus possible to produce special coding effects.”
The Applicant stated in their submissions:
“It does not assist the opponent that Lutz includes a single sentence in [0072] that states: ‘By virtue of the laterally displaced arrangement of the diffraction structure, depending on the respective viewing angle, it is possible to achieve different effects, in particular different colour configurations in the region of the markings 10’. Among other difficulties:
(a) It is unclear what the ‘respective viewing angles’ referred to in this passage are. For example, no passage of Lutz states that the device is viewed at an angle perpendicular, or acute, to the plane of the film: Jotcham at [119(c)].
(b) It is unclear what the ‘different effects’ referred to are. This may be referring to the circumstance that the viewer will be able to take in both the metalically matt or shiny area through the laser-treated regions 10, while at the same time, observe the diffraction patch through the other parts of transparent layer 4: Jotcham at [83].
(c) It is unclear what the words ‘in the region of the markings 10’ mean. On the face of Figure 14, the diffraction patch 5b is displaced from the markings 10 such that it will never be visible through those markings, no matter how acute the angle. Thus, Mr Jotcham understands those words may be referring to the region nearby the markings (i.e., the transparent surface adjacent to the laser sensitive material) rather than the region within the markings themselves: Jotcham at [83].”

Dr Hardwick’s second statutory declaration states:
“My understanding of the security device described in US'537 by reference to Figure 14 is set out in paragraph 68 of my First Declaration. An alternative understanding of the device described by reference to Figure 14 is set out in paragraph 83 of Jotcham. This understanding is predicated on the assumption that the expression ‘in the region of the markings 10’ means nearby the markings 10 but not actually in the location of the markings 10. I disagree with this interpretation of US'537. In paragraph [0072] of US'537, it is said:
Various markings 10 are produced by means of the laser in the laser sensitive region 4a, more specifically by laser-induced bleaching or laser induced color change. The laser-treated regions 10 in question thereby become more or less transparent. By virtue of the laterally displaced arrangement of the diffraction structure, depending on the respective viewing angle, it is possible to achieve different effects, in particular different color configurations in the region of the markings 10. It is thus possible to produce special coding effects.
It is clear to me that the different colour effects are achieved in the region of markings 10 (being in the location of markings 10) depending on viewing angle (not depending on whether the viewer is looking at markings 10 or nearby markings 10) by virtue of the laterally displaced arrangement of the diffraction structure.”
I am satisfied that the disclosure at paragraph 72 is that the background region 5b would be visible through the transparent region of the marking 10.
Secondly, the Applicant argued that the marking 10 does not overlap the background region 5b. In construing the word overlap I found that this is determined in a perpendicular direction. It is clear from figure 14d that the marking 10 is not overlapping the background region 5b.
Thirdly, the Applicant argued that the marking and background do not co-operate to create an optically variable effect and instead the optically variable effect is formed only by the diffraction patch. I consider that there are two optical effects in this embodiment: the multicolor effect from the diffraction pattern, and the optical effect of either seeing the diffraction pattern or the background area depending on the viewing angle. These two optically variable effects are considered below.
The multicolour effect of the diffraction pattern alone is not an optically variable effect as defined in the claims since there is no cooperation of the marking and the background. On the other hand, the optical effect caused by either seeing the diffraction pattern or the background area through the window formed by the marking depending on the viewing angle is the ‘special coding effects’ in the last sentence of paragraph 72 and I consider this to be an optically variable effect.
Fourthly, the Applicant argued that the background layer is not a pattern of at least two colour elements. In construing the words of the claim I have found that a pattern must be more than a single uniform area and thus the first embodiment of Lutz does not disclose a pattern colour pattern layer comprising elements of two or more different colours.
In summary, the first embodiment of Lutz does not disclose the features of claim 1 of: a) the patterns overlapping and b) a second colour pattern layer comprising elements of two or more different colours.
Second embodiment
During the hearing I asked the parties about the embodiment in Figure 11 of Lutz reproduced below:
In considering the second embodiment I will address the same four features considered in the first embodiment. The first and second features are clearly disclosed in Lutz. The printed image 5d is clearly visible through the transparent marking 10, and the marking 10 clearly overlaps (in an orthogonal direction) the printed image 5d.
The third element, whether the patterns co-operate to form an optically variable effect is now considered. It appears, prima facie, from figure 11 that the top layer (items 4a and 10) (the A shaped window) could cooperate with the background layer such that there is an optically variable effect.
Lutz states at paragraph 70:
“By laser treatment of the film, starting from the condition as is shown in FIGS. 11a and b—the laser irradiation procedure is effected from above in the direction of the arrow in FIG. 11—a marking—in the example in FIGS. 11c and 11d a transparent marking in the form of an A—is produced in the laser-sensitive layer, that is to say in the region 4a, by laser-induced bleaching or laser-induced color change. The subjacent printed image 5d is freely visible through that marking in the region of the marking, or is more or less translucently visible. That therefore provides a marking which—depending on the color or configuration of the printing 5d and the respective degree of transparency or shading of the marking region in the layer 4a—can involve any color or colored configuration. At any event this affords an image which is combined from a laser-induced image component and an image component formed by the background layer.”
The combined image mentioned in paragraph 70 is not necessarily an image of optically variable effect. Although it may be possible to use a background pattern of a colour, proportion and size and a suitably sized transparent marking and spacing layer such that an optically variable effect is generated through the parallax effect, this is not explicitly disclosed in Lutz, nor would it necessarily be formed.
Alternatively, it could be argued that the printed image 5d could be visible and the background not visible at one viewing angle, while at another viewing angle the background would be visible and the printed image not visible, thus forming an optically variable effect. An inference could be made from figure 11 that this may be possible. However, in the absence descriptive support or evidence for such an inference, I am not satisfied that this is a clear and unmistakable disclosure of an optically variable effect.
Consequently, the feature of the patterns co-operating to generate an optically variable effect is not disclosed in Lutz.
The fourth element, whether the printed image is a pattern comprising elements of two colours, is reasonably clear. The cross section view in figures 11b and 11d, show a pattern which must inherently be of two colours (otherwise, if the pattern and background were the same colour, the pattern would not be visible).
In summary, the second embodiment of Lutz discloses all the features of claim 1 except the feature of the first and second patterns cooperating to generate an optically variable effect.
US 2008/0042427 (Muke)
The Opponent states in their submissions:
“United States Patent Application US2008/0042427 (US’427) was published on 21 February 2008 and discloses a security article with a multi-coloured image.
US’427 describes the forming of a security article from multiple layers of polymeric material each having different images components. The image components differ in colour so that when the various layers are combined, a multi-coloured image is created (Hardwick 1 [75]).
A basic embodiment of the invention of US’427 is described by reference to Figures 1 to 3 of which Figure 3 is reproduced below:
In this embodiment, three separate layers 11, 12, 13 each have a different coloured portion of an image 21, 22, 23 which may be formed by incorporating a latent colour forming material in each layer and irradiating each layer with appropriate wavelength laser radiation to form the image portions (Hardwick 1[76]).
A variation on the above embodiment is described in paragraphs [0069] and [0070] of US’427 by reference to figure 5. The figure 5 embodiment differs in that in addition to the coloured image portions described above, two of the layers of the device are also provided with additional images printed in optically variable inks. These additional images may be printed at different laterally spaced locations and may partly overlap with each other and with parts of the multi-coloured image described above (Hardwick 1 [77]). The combination of the coloured image portions and the additional images results in a multi-coloured image the appearance of which will vary at different viewing angles (Hardwick 2 [17]).”
The Applicant states:
“Further, integer 1.4 is not disclosed. Muke does not anywhere disclose first and second patterns that co-operate to generate an optically variable effect, whereby the appearance of the device varies at different angles. The variable effect is generated by the ink itself, without any co-operation between two layers of patterns as required by claim 1: Jotcham at [88(a)-(c)]; [125].
Further still, there is no disclosure of any first pattern, as claimed. While Dr Hardwick states that the first pattern comprises image portion 21 embedded in the laser-sensitive layer 11, in Figure 5, image portion 21 consists of a single region only. This is contrary to the words of claim 1, which require “a first pattern of integral regions of the layer” (i.e. the pattern must be constituted by more than one region: Jotcham at [126]). For this additional reason, integers 1.1 and 1.3 are not disclosed.”
Dr Hardwick states in his second declaration:
“Claim 1 makes no reference to a masking effect. Claim 1 requires two layers, each having a pattern with the patterns at least partially overlapping. The patterns are configured so that when the device is viewed, they cooperate to create an optically variable effect. The requirement of claim 1 is that the combined effect of the two patterns is that a person observing the device at different viewing angles observes a variation in appearance. The combined effect of the patterns of the device illustrated in Figure 5 of US'427 is that a person observing the device at different viewing angles observes a variation in appearance. The observed appearance is not due to the optically variable ink layer alone but rather is the combination of the optically variable ink layer with the other coloured layers present in the device. Accordingly, it is clear to me that the patterns are configured so that when the device is viewed, they cooperate to create an optically variable effect.”
I have construed the phrase “the first and second patterns co-operate to generate an optically variable effect” to mean that a distinct optically variable effect must be generated by the co‑operation between the layers. The optically variable ink layer creates an optically variable effect by itself, however the adjacent coloured layer disclosed in Muke does not cooperate to provide a distinct optically variable effect.
Second invention
US 2007/0246932 (Heine)
The Opponent states:
“52. US’932 describes a security element with an optically variable structure, consisting of an embossed structure and a coating which combine so that parts of the coating are completely visible upon perpendicular viewing, but are concealed upon oblique viewing. Changes in viewing direction result in different pieces of information becoming visible to the viewer (Hardwick 1 [84]).
53. A basic embodiment of the invention of US’932 is described by reference to Figures
1 to 5 of which Figure 2 is reproduced below:
The device of US’932 includes a number of uniform, non-linear embossed elements 5 which have a coating 7 formed as a multicoloured pattern with individual coloured areas located on the flanks of the embossed elements. The coating is applied so that depending on the viewing angle, the security device may appear to be one of the multiple individual colours or a combination of two such colours (Hardwick 1 [85]).
US’932 discloses to the skilled addressee that in certain embodiments, the substrate of the security device may be formed of a plastics material which may be at least partially transparent (Hardwick 1 [86] to [87], Hardwick 2 [20] to [22]).”
The applicant states:
“80. There is a simple and straightforward reason why Heine does not anticipate those claims. This is that Heine does not anywhere state the substrate to which the ink is applied is ‘at least semi-transparent’. To the contrary, Heine discloses that blobs of ink are applied to the flanks of paper, or other opaque substrates: see e.g. [0002], [0027], [0124]; Jotcham at [92].”
During the hearing the Opponent noted that Heine disclosed at paragraph 41:
“According to a further embodiment the security element may have further layers or authenticity features, such as e.g. a metallic layer, an additional translucent optically variable layer or a foil element. The optically variable structure may be overlaid or underlaid with such layers or elements.”
The Opponent submitted that if an additional security element is underlaid beneath the security device, then the security device must necessarily be transparent. The Applicant submitted that the reason the additional security device was underlaid was so it was only visible from the other side of the security device.
Although the Opponent provides a plausible explanation as to why the contoured layer disclosed in Heine could be transparent, I consider the Applicant also provides a plausible explanation why the contoured layer disclosed in Heine would not be transparent. On balance, I am not satisfied that there is a clear and unmistakable disclosure of a semitransparent layer as defined by the claims.
US 7,630,954 (Adamczyk)
The Opponent states:
“US’954 describes an optically variable element having an embossed structure with raised areas and a first contrasting coating. Parts of the coating are visible upon perpendicular viewing but concealed upon oblique viewing giving rise to an optically variable effect with a change in viewing angle. The optically variable element also has a second contrasting coating at least partially overlapping with the first coating (Hardwick 1 [95]).
An embodiment of the invention of US’954 is described by reference to Figure 2, which is reproduced below:
As described, data carrier 1 is formed with an embossed structure 5 consisting of triangular profiled regions. A first coating 4 is applied to one face of the triangular structures and a second coating 6 is applied over the structures (Hardwick 1 [96]).
The device of US’954 presents a different appearance to a viewer at each of three different viewing angles. From direction A, the device appears as a mixture of the colours of first coating 4 and second coating 6. Upon oblique viewing from direction B, the viewer is faced by the flank of embossed structure 5 that carries first coating 4 and perceives a uniform additive colour being the combination of colour from first coating 4 and second coating 6. In viewing direction C the viewer is faced by the flanks of embossed structure 5 that coincide with the absence of first coating 4 and perceives a uniformly coloured surface in the colour of second coating 6 (Hardwick 1 [97]).
US’954 discloses to the skilled addressee that in certain embodiments, the substrate of the security device may be formed of a plastics material which may be at least partially transparent (Hardwick 1 [98], Hardwick 2 [24]).”
The Applicant states:
“Similarly to Heine, Adamcyzk does not anticipate, because there is no disclosure that the layer that features the raised region is semi-transparent. To the contrary, Adamcyzk discloses that the layer incorporating the raised feature is an opaque paper bank note: col 3, lines 19-20; col 6, lines 59-61; col 8 line 34; Jotcham at [95], [133]. Therefore, integer 3.1 is absent.”
During the hearing the Opponent argued that Adamczyk provided an implicit disclosure at column 4 lines 57 to 63:
“The inventive optically variable structure can be underlaid or covered, not with an additional printed image, but with a foil element, such as a diffraction structure embossed into a lacquer layer. Here, any desired layer structures and types of foil elements can be used, such as real holograms, lattice structures, volume holograms that are executed to be transparent, semitransparent or opaque.”
The Opponent submitted that if an additional security element is underlaid beneath the security device, then the security device must necessarily be transparent. The Applicant submitted that the reason the additional security device was underlaid was so it was only visible from the other side of the security device.
Although the Opponent provides a plausible explanation as to why the contoured layer disclosed in Adamczyk would be transparent, I consider the Applicant also provides a plausible explanation why the contoured layer disclosed in Adamczyk would not be transparent. On balance, I am not satisfied that there is a clear and unmistakable disclosure of a semitransparent layer as defined by the claims.
Inventive step
Under subsections 7(2) and 7(3), an invention is taken to involve an inventive step unless it would have been obvious to the person skilled in the art in the light of the common general knowledge, either considered alone or together with the prior art.
The test for whether an invention is obvious is whether it would have been a matter of routine to proceed to the claimed invention. In Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12 it was stated:
“The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.”
In Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59, the High Court accepted the approach taken in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157 at [187] where Graham J posed the reformulated Cripps question:
“Would the notional research group at the relevant date, in all the circumstances, …. directly be led as a matter of course to try [the claimed combination] in the expectation that it might well produce a [useful or better result]?” (emphasis in original)
In AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99, the court held that in formulating the problem it is not permissible to incorporate information that is not available to the person skilled in the art either as common general knowledge or information available under subsection 7(3).
The person skilled in the art
Both the experts who provided evidence, Mr Jotcham and Dr Hardwick, clearly have a great deal of experience in the field of security device technology and thus are each considered to have knowledge representative of a person skilled in the art.
First invention
US 2005/0118537 (Lutz)
Embodiment in Figure 14
I have found two of the features defined in claim 1 are not disclosed in Figure 14. There is no evidence to explain how a person skilled in the art would modify the embodiment of Figure 14 such that the features not disclosed would be included. I am not satisfied that a person skilled in the art would modify the embodiment of Figure 14 such that it contains all the features of claims 1 and 12. Consequently the claims are inventive in light of the embodiment in Figure 14 in Lutz.
Embodiment in Figure 11
I have found above that the embodiment of figure 11 does not explicitly disclose an optically variable effect. There is no evidence addressing how a person skilled in the art would modify this embodiment of Lutz to have an optically variable effect. I am not satisfied that a person skilled in the art would modify Lutz such that it would include an optically variable effect. Consequently the claims are inventive in light of the embodiment in Figure 11 in Lutz.
US 2008/0042427 (Muke)
I have found that Muke does not disclose a variable effect generated by co-operation between the layers. There is no evidence to explain how a person skilled in the art would modify Muke such that the features not disclosed would be included. I am not satisfied that a person skilled in the art would be motivated to modify the invention disclosed in Muke, or indeed how a modification could be made, such that the features not disclosed would be included. Consequently the claims are inventive in light of Muke.
Second invention
US 2007/0246932 (Heine) and US 7,630,954 (Adamczyk)

I have found that both Heine and Adamczyk fail to disclose the contoured layer to be formed from a semi-transparent material.
The Opponent submitted at the hearing that, even if the Applicant was right and Heine and Adamczyk didn’t specifically disclose a semitransparent substrate, the notion of introducing transparency into those devices is simply a matter of routine. However, the Opponent did not provide an explanation as to why a person skilled in the art would be motivated to substitute an opaque substrate with a semi-transparent substrate.
The Applicant submitted that the prior art teaches away from the claimed invention. The semi‑transparent layer would cause the colours to mix together when viewed from different angles rather than being distinct colours when printed on an opaque layer as disclosed in Heine and Adamczyk. Mr Jotcham provided evidence that a person skilled in the art would not substitute an opque layer with a semi-transparent layer. Mr Jotcham states in his declaration at paragraph 94:
“I would therefore not have tried BAH-7 [Heine] on a substrate which was ‘at least semi-transparent’ (such as the semi-transparent hologram). This is because when the substrate is transparent or semitransparent, the chance of interaction between the coatings is far greater and would much more likely create a mess, rather than a useful optically variable effect, because of the combinations of colours and effects that can be seen from various angles, including from above and below the device and in transmitted and reflected light. To apply the print on an at least semi-transparent layer would not occur to me since this would not achieve the results sought in BAH-7 [Heine], which rely on the surface relief being opaque.”
The lack of evidence and explanation of why a person skilled in the art would modify Heine or Adamczyk to substitute the opaque substrate with a semi-transparent substate result in my concluding that a person skilled in the art would not modify Heine or Adamczyk to include a semitransparent layer. Consequently the claims are inventive in light of Heine and Adamczyk.
Section 40
Clear enough and complete enough disclosure (s 40(2)(a))
Paragraph 40(2)(a) requires that a complete specification must disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art. The principles for determining whether a specification provides the requisite disclosure are provided in CSR Building Products Limited v United States Gypsum Company [2015] APO 72 (6 November 2015). The Delegate stated:
“In order to decide whether a specification provides a disclosure as required by section 40(2), it is necessary to:
i)construe the claims to determine the scope of the invention as claimed,
ii)construe the description to determine what it discloses to the person skilled in the art, and
iii)decide whether the specification provides an enabling disclosure of all the things that fall within the scope of the claims.”
The Delegate in CSR made reference to Eli Lilly and Co v Human Genome Sciences, Inc [2008] EWHC 1903; [2008] RPC 29 and the approach approved by Kitchin J at 241 and 243:
“The sub-section, by using the words, clearly enough and completely enough, contemplates that patent specifications need not set out every detail necessary for performance, but can leave the skilled man to use his skill to perform the invention. In so doing he must seek success. He should not be required to carry out any prolonged research, enquiry or experiment. He may need to carry out the ordinary methods of trial and error, which involve no inventive step and generally are necessary in applying the particular discovery to produce a practical result. In each case, it is a question of fact, depending on the nature of the invention, as to whether the steps needed to perform the invention are ordinary steps of trial and error which a skilled man would realise would be necessary and normal to produce a practical result.”
and
“Even though a reasonable amount of trial and error is permissible, when it comes to sufficiency of disclosure, for example in an unexplored field or where there are many technical difficulties, the skilled person has to have at his disposal, either in the specification or on the basis of his common general knowledge, adequate information leading necessarily and directly towards success through the evaluation of initial failures.”
First invention
The Opponent states:
“For the reasons set out above, claims 1 to 9, 11 to 15 and 17 to 19 encompass security devices and methods for their manufacture which involve the use of vesicular films as described in the specification of AU’437. However these claims are not limited to the use of such films.
The advantages of the invention disclosed in the specification are said to arise as a result of having a first pattern formed by modified regions of an otherwise semitransparent layer. As disclosed in the specification, the first pattern is formed by taking a layer being in a first state in which it does not have a first pattern and modifying the layer so as to be in a second state in which it does have a first pattern. In particular the invention involves using a photosensitive film referred to as a vesicular film which is exposed to form a pattern of higher optical density regions. (Hardwick 1 [38] to [39]).
None of claims 1 to 9, 11 to 15 and 17 to 19 require the first pattern to be formed by the process described above. For the reasons set out above, at least some of those claims encompass known manufacturing techniques but also encompass security devices produced by techniques not forming part of the common general knowledge but also not disclosed in the specification of AU’437. Accordingly, there is insufficient disclosure in the complete specification to enable a person skilled in the art to produce a security device as defined in claims 1 to 9, 11 to 15 and 17 to 19 other than by the use of vesicular films.”
Although the specification does not disclose any other methods that could be used to form the first layer, the evidence suggests that other methods would be well known to a person skilled in the art. For example, Dr Hardwick’s first declaration states at paragraph 33:
“Depending on what other steps were taken, the printing and foil application techniques are also likely to result in a pattern which forms part of an integral security device. For example, if as is typically the case, a coating layer was applied over the printed or foil pattern to protect is from wear or provide other visual effects, I consider that the result would be a security device with the pattern formed integrally with the substrate.”
I am satisfied that there is an enabling disclosure of the first invention.
Second invention
The Opponent made submissions that the expert evidence showed that there was not an enabling disclosure of the second invention.
Mr Jotcham states in his declaration at paragraph 53:
“Whilst OP-OVDs made by having areas of raised regions were known at the priority date (such as the semi-transparent hologram I described above), I would not at the priority date have considered attempting to create such an OP-OVD as the Second Aspect at the priority date. This is because it would be extremely difficult to do so. For instance, if the areas were to be raised first and print were then to be applied, this would be extremely difficult because it would require printing on an uneven surface such that the print follows the contours of the regions of the first layer.”
The description states at page 43 lines 17 to 21:
“Finally, as shown in Figure 16(c), a colour layer 135 is applied to the relief pattern formed in the surface of layer 132, using wet lithographic printing for example. In this example, the colour pattern comprises elements 136, 137, 138 in three colours as per the embodiment of Figure 6 but as previously described, many other configuration are possible.”
Mr Jotcham’s evidence is that printing onto a relief pattern (disclosed at page 43 lines 17 to 21) would be extremely difficult. Although this method of producing the second invention may be difficult, there is no evidence to suggest that this aspect of the invention would not work or that this disclosure is not enabling.
I also note that there is at least one other method of forming the pattern on a relief structure, wherein the printing is done as a first step and then the film is heated to form the contours (page 41 line 9 to page 42 line 26). Consequently, I am satisfied that there is an enabling disclosure of the second invention.
Support
Subsection 40(3) states that the claims must be supported by matter disclosed in the specification. As discussed in CSR Building Products Limited v United States Gypsum Company, with reference to Fuel Oils/Exxon T 0409/91 [1994] OJ EPO 653 (Exxon), this requires that the scope of the claims “should correspond to the technical contribution to the art”. As stated in Exxon:
“in other words it is the definition of the invention in the claims that needs support. In the Board’s judgement, this requirement reflects the general legal principle that the extent of the patent monopoly, as defined by the claims, should correspond to the technical contribution to the art in order for it to be supported, or justified. This means that the definitions in the claims should essentially correspond to the scope of the invention as disclosed in the description. In other words, as was stated in Decision T 26/81, the claims should not extend to subject-matter which, after reading the description, would still not be at the disposal of the person skilled in the art. Consequently, a technical feature which is described and highlighted in the description as being an essential feature of the invention, must also be a part of the independent claim or claims defining this invention”. (emphasis in original, citations omitted)
The steps for determining whether the claims are supported were summarised in CSR as:
“i) construe the claims to determine the scope of the invention as claimed,
ii)construe the description to determine the technical contribution to the art, and
iii)decide whether the claims are supported by the technical contribution to the art.”
The Opponent states:
“The technical contribution to the art as disclosed in the specification of AU’437 involves using a photosensitive film referred to as a vesicular film which is exposed to form a pattern of higher optical density regions. (Hardwick 1 [38] to [39]). The beneficial effect said to be achieved by the invention is derived from the specific use of such vesicular films (see for example Jotcham [44]).”
The use of a photosensitive film is a preferred embodiment to create one of the features of the claim, but it is not the technical contribution to the art. I consider that the technical contribution is the combination of features in the claim to provide an optically variable effect. Consequently, the technical contribution to the art supports the claims.
Utility

100. In relation to the requirement of utility, the Full Federal Court has stated that “the invention as claimed must attain the result promised by the patentee” (Ranbaxy Australia Pty Ltd v Warner-Lambert Co LLC [2008] FCAFC 82 at [141]. In H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70 the Full Federal Court stated that:
“A claim is bad if it covers means that will not produce the desired result, even if a skilled person would know which means to avoid. That is to say, everything that is within the scope of a claim must be useful, otherwise the claim will fail for inutility”

101. The Opponent’s submissions state:
“An objective of the alleged invention is to provide ‘new security devices and visual effects’ (Hardwick 1 [23] to [24]).
As discussed above, it was part of the common general knowledge that optically variable effects the appearance of which alters with the viewing angle could be produced by the interaction of overlapping patterns. As much is admitted in the complete specification (Hardwick [37]). The security devices or methods for their production as claimed in claims 1 to 19 do not produce any new visual effect over and above such known security devices (Hardwick 1 [40]).
Accordingly, the invention as claimed in claims 1 to 19 fails to meet the promise of the invention and is lacking in utility.”

102. The description states at page 1 lines 24 to 26:
“There is a constant need to develop new security devices and visual effects in order to stay ahead of would-be counterfeiters, or at least provide a useful alternative to prior art security devices and visual effects.”

103. The security devices and the visual effects of the present invention differ from the prior art and thus provides a useful alternative to the prior art. The claim does not cover means that will not produce the desired result. I consider everything within the scope of the claims to be useful.
Conclusion
104. The opposition is unsuccessful. The Opponent has not established that the claims lack novelty, inventive step, utility, support, and has further not established a lack of enabling disclosure.
Costs
105. Costs typically follow the event, however a variation of costs can be made to reflect actions of parties during the opposition.
106. By amending the specification during the opposition the Applicant essentially concedes that the application was not valid before that amendment. Thus the Opponent was correct to oppose the application up until the point in time when the amendments were made.

Thus, I awards costs against the Applicant up to the day when the amendments to the specification were allowed (7 March 2017) and I award costs against the Opponent from the day after the allowance of the amendments (8 March 2017).
Xavier Gisz
Delegate of the Commissioner of Patents