CCL Secure Pty Ltd (formerly Innovia Security Pty Ltd) v De La Rue International Limited
[2017] APO 46
•7 September 2017
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
CCL Secure Pty Ltd (formerly Innovia Security Pty Ltd) v De La Rue International Limited [2017] APO 46
Patent Application: 2011222715
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: 7 September 2017
Hearing Date: 29 May 2017, in Melbourne
Catchwords: PATENTS – opposition to the grant of a patent – inventive step – manner of manufacture – moiré magnification devices – registration issues when printing microimages in different colours – undesirable visual effects due to colour mis-registration – two side-by-side microimage arrays of different colours – perceivable interruption zone between the magnified images of the two arrays – problem formulation – opposition unsuccessful – costs awarded
Representation: Counsel for the Applicant: Mr Tom Cordiner QC
Counsel for the Opponent: Mr Craig Smith
Patent attorney for the Opponent: Mr Chris Schlicht of Phillips Ormonde Fitzpatrick
Also present: Mr Ian Lindsay of CCL Secure Pty Ltd (formerly Innovia Security Pty Ltd)
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2011222715
Title:Moiré magnification device
Patent Applicant: De La Rue International Limited
Date of Decision: 7 September 2017
DECISION
Lack of inventive step is not established. It is also not established that the claimed invention is not a manner of manufacture. 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 CCL Secure Pty Ltd (formerly Innovia Security Pty Ltd).
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 2011222715 (the Application) in the name of De La Rue International Limited (the Applicant). The Application is a national phase of international application PCT/GB2011/050399 published as WO 2011/107783. The Application claims a priority date of 01 March 2010.
The Application was advertised as accepted on 04 June 2015. A notice of opposition to grant was filed on 04 September 2015 by CCL Secure Pty Ltd (formerly Innovia Security Pty Ltd) (the Opponent). The statement of grounds and particulars (the SGP) was filed on 04 December 2015.
The evidence in support was completed on 04 March 2016. On 13 April 2016, the Opponent filed a request to amend the SGP under regulation 5.16, which was subsequently allowed on 13 May 2016.
The evidence in answer was completed on 08 June 2016. On 09 June 2016, the Applicant filed a request to amend the specification under section 104. The allowance of the amendment was not opposed and the amendment was subsequently allowed on 17 October 2016.
The evidence in reply was completed on 08 August 2016. On 17 November 2016, the Opponent filed a request under regulation 5.16 to amend the SGP, which was subsequently allowed on 08 December 2016.
The “Opponent’s Outline of Submissions for Hearing” (Opponent’s Summary, or OS) was filed on 15 May 2017. The “Summary of Patent Applicant’s Submissions”, including Annexure A (Applicant’s Summary, or AS) was filed on 23 May 2017.
Relevantly, the present hearing is with respect to the Application as amended by the amendment filed on 09 June 2016, and is based on the SGP as amended on 08 December 2016.
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]).
The request for examination with respect to the Application was filed on 19 March 2013, therefore the above mentioned standard of proof applies. In addition, the filing date of the request for examination being before 15 April 2013 also means that the Application was examined under the Act and Regulations as in force before the amended provisions of the Raising the Bar Act and the same are also applicable to the present opposition proceedings.
It is well settled that the Opponent has the onus of establishing the facts supporting the grounds of opposition.
Grounds of Opposition and Evidence
The SGP (as amended) lists the following grounds of opposition:
·Not novel – subparagraph 18(1)(b)(i);
·Does not involve an 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);
·The claims do not define the invention – paragraph 40(2)(b);
·The claims are not clear – subsection 40(3); and
·The claims are not fairly based – subsection 40(3).
However, I note that in the Opponent’s Summary, the majority of the above grounds has been dropped, the remaining grounds being as follows:
·Does not involve an inventive step (in respect to all claims);
·Not a manner of manufacture (in respect to all claims).
Therefore, I will limit my consideration to the grounds listed immediately above, i.e. inventive step and manner of manufacture.
The evidence in support (filed before the amendment to the specification) consists of:
·A declaration by Dr Karlo Ivan Jolic dated 04 March 2016 (Jolic-1) with exhibits KIJ-1 to KIJ-14;
·A declaration by Mr Benjamin Stevens dated 24 February 2016 (Stevens-1) with exhibits BS-1 to BS-3;
·A declaration by Mr Rodney Ian Lindsay Cruise dated 04 March 2016 (Cruise) with exhibits RIC-1 to RIC-6; and
·A declaration by Mr Christopher Schlicht dated 04 March 2016 (Schlicht) with exhibits CDS-1 and CDS-2.
The evidence in answer consists of:
·A declaration by Dr Malcolm Robert Murray Knight dated 26 May 2016 (Knight) with exhibits MK-1 to MK-4.
The evidence in reply consists of:
·A declaration by Dr Karlo Ivan Jolic dated 08 August 2016 (Jolic-2) with exhibits KIJ-15 and KIJ-16; and
·A declaration by Mr Benjamin Stevens dated 08 August 2016 (Stevens-2) with exhibit BS-4.
I note that the Opponent’s case as outlined in the Opponent’s Summary does not appear to rely on any of the prior art documents filed in evidence by the Opponent.
The Specification of the Application
Here, I will provide a brief discussion of the specification as necessary for the understanding of the nature of the claimed invention. I will return to the description later in this decision when discussing the problem solved by the invention.
The title of the specification is “Moiré magnification device” and the technical field of the invention is characterised in the description as:
“In at least one embodiment, the present invention broadly 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)
The section “Background” explains the basic design and operation of the moiré magnification devices:
“In such a device, 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)
On page 2, 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”. 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 affect that results in the apparent movement of the magnified image is also rotated and this is known as skew parallax. The effect of pitch mismatch and rotational misalignment on the magnification and rotation of the magnified image observed in a moiré magnifier is described in ‘The Moiré Magnifier’, M.Hutley, R Hunt, R F Stevens and P Savander, Pure Appl. Opt. 3 (1994) 133-142 published by IOP Publishing Limited.” (page 1)
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 as illustrated e.g. by the device of Figure 2(a) to (c) (reproduced below). Figure 2(a) shows the visible arrays of magnified images (i.e. arrays of numbers “20” and “crest” symbols), whereas Figure 2(b) schematically illustrates portions of the corresponding microimage arrays of the device. Figure 2(c) depicts a portion of the microimage arrays with exemplary magnified images (the “20” and the “crest”) overlaid. Since each magnified image is generated by several neighbouring micro-focussing elements and includes magnified portions of several neighbouring image elements, it is sometimes being referred to as a “synthetic image”.
The next section “Summary” includes consistory statements broadly corresponding to the independent claims. The section “Detailed description” describes the preferred embodiments of the invention with reference to Figures 1 to 30.
The specification ends with 37 claims, of which claims 1, 15, and 33 are independent and reproduced below:
“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, the second array of microimage elements being laterally offset from the first,
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 an interruption zone of non-zero width is perceived between the magnified version of the first microimage array and the magnified version of the second microimage array, the interruption zone exhibiting no magnified version of either microimage array.
15. A method of manufacturing a moiré magnification device, comprising, in any order:
a) forming a regular array of micro-focusing elements on a first surface of a transparent substrate, the focusing elements defining a focal plane;
b) forming on a second surface of the transparent substrate, in a first working, 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,
c) forming on the second surface of the transparent substrate, in a second working, 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, the second array of microimage elements being laterally offset from the first,
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 an interruption zone of non-zero width is perceived between the magnified version of the first microimage array and the magnified version of the second microimage array, the interruption zone exhibiting no magnified version of either microimage array.
33. A security document comprising a document substrate having at least two transparent or translucent windows spaced apart from one another, and a 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 at least a portion of the first array of microimage elements is not overlapped by the second, and at least a portion of the second array of microimage elements is not overlapped by the first;
and 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,
the device being incorporated into or applied on to the document substrate in alignment with the at least two windows, the device being registered to the document substrate such that, the magnified version of the first microimage element array is visible through the first of the two windows and the magnified version of the second microimage element array is visible through the second of the two windows, the transition between the two microimage element arrays being concealed by the document substrate between the two windows.”
Claim Construction
It is clear that the invention defined in claim 1 is a moiré magnification device comprising an array of micro-focusing elements and two arrays of microimage elements, the microimage elements of the same array being of the same colour and the microimage elements of different arrays being of different colours.
The expression “the second array of microimage elements being laterally offset from the first”, on its own, does not define the amount of lateral offset which means that the two microimage arrays can be remote with no overlap at all, but they can also be overlapping to a substantial degree as long as they could be considered as being offset following certain geometrical rules. However the limitation that “an interruption zone of non-zero width is perceived between the magnified version of the first microimage array and the magnified version of the second microimage array” clearly indicates that although the microimage arrays can potentially overlap, the magnified versions of the arrays do not overlap. Hence, in the context of the claim, it is unimportant whether the two microimage arrays overlap or not, as long as their lateral offset is sufficient to achieve non-overlapping magnified versions of the arrays. I will refer to this configuration of microimage arrays as a side-by-side arrangement. This term was also used by the parties, and I note that my interpretation does not contradict the understanding of the Experts:
“I understand that what is meant by ‘laterally offset’ in claim 1 of '715 [the Application], is that one array of microimage elements is placed side by side with another array of microimage elements.” (Jolic-2 at [18])
“It is also clear to me that:
(a) as a result of the requirement of ‘lateral offset’, the two microimage arrays are laterally spaced apart from each other in different ‘blocks’; …” (Knight at [71]).
Although lack of clarity is no longer a ground on which the Application is opposed, the Opponent’s interpretation of the claims appears highly significant for their case on obviousness as clearly demonstrated by the opening paragraphs of the Opponent’s Summary:
“The opposed application (Application) relates to a known type of optically variable device (OVD) for use in applications such as document security, the device being difficult to counterfeit.
More specifically, the Application seeks, in effect, to monopolise the idea of using two side-by-side ‘moiré magnifiers’ with images of different colours, as explained below.
It does this by asserting a monopoly over all implementations of side-by-side moiré magnifiers, using differently coloured images, unless this has been done using at least some small degree of overlap between the underlying microimage arrays.” (OS at [1-3], original emphasis)
During the hearing, I sought to clarify the Opponent’s view, and the Opponent confirmed that, in their submissions, two completely separate moiré magnification devices of different colours positioned side-by-side would still be within the scope of claim 1.
At the hearing, the Applicant expressed their disagreement with the Opponent’s interpretation. In essence, they stated that claim 1 defines one moiré magnification device not two, and this one device has one regular array of micro-focusing elements and two arrays of microimage elements which are disposed under this one regular array, thus (unlike two adjacent but separate devices) combining both of the microimage arrays located side-by-side under one micro-focussing elements array.
I note that the claim defines a “moiré magnification device comprising a transparent substrate carrying … a regular array of micro-focusing elements”. The Experts have not provided any specific comments on the exact meaning associated in the art with the term “moiré magnification device”. For example, Dr Jolic uses expressions like (emphasis added):
“Typically such devices comprise an array of micro lenses on one side of a clear substrate which are used to view an array of micro images located on the other side of the substrate and in the focal plane of the micro lenses.” (Jolic-1 at [19])
“However in devices such as a polymer bank note, the maximum pitch of the micro-focusing elements is below typical manufacturing tolerances” (Jolic-1 at [65])
“The device includes 2 authenticating features, one being a moire magnification device.” (Jolic-1 at [128])
I consider that any optical device utilising the moiré magnification effect can be considered a moiré magnification device. Furthermore, the term “device” in itself is a rather broad term including in its scope complex “compound devices” formed by two or more simpler devices (see e.g. the last quoted paragraph above). Hence I do not see why an arrangement of two completely separate moiré magnification devices of different colours positioned side-by-side could not be generally considered a moiré magnification device. Such an interpretation does not appear contradictory to the Experts’ evidence.
On the other hand, two completely separate moiré magnification devices of different colours would need to have two separate transparent substrates each one carrying an array of micro-focusing elements and an array of microimages of one of the different colours. The Opponent’s submissions imply that when the two devices are placed side-by-side, their two separate transparent substrates carrying two separate arrays of micro-focusing elements could be considered as “a transparent substrate” carrying “a regular array of micro-focusing elements” as defined in the claim. As with the term “device”, I do not find it generally inappropriate to consider, in this arrangement, the two separate transparent substrates as two parts forming a transparent substrate. The two separate arrays of micro-focussing elements of each separate device would clearly form an array of micro-focusing elements. Therefore, the question I need to answer is whether this array of micro-focusing elements would be a regular array.
The specification does not provide a definition of the term “regular array”. I also note that none of the Experts considered it necessary to comment on the meaning of this term in any detail.
I consider that the most trivial interpretation of “a regular array of micro-focussing elements” in the context of moiré magnification devices would be an array of micro-focusing elements where the micro-focusing elements are ordered in a symmetrical lattice or grid (e.g. square, hexagonal, etc.) with the corresponding array of microimage elements following the same general order.
However I note that claim 6 defines a “device according to claim 1, wherein the regular array of micro-focusing elements comprises first and second regular arrays of micro-focusing elements laterally spaced from one another by a boundary region of non-zero width which is free of functioning micro-focusing elements”. This configuration does not appear to fit the most trivial interpretation mentioned above, hence the term “regular array” must be given a broader interpretation.
During the hearing, I invited the Applicant to comment on the meaning of “regular array” as defined in claim 1, and more particularly with respect to the above mentioned arrangement of claim 6 (depicted e.g. in Figure 15, provided below for reference). The Applicant’s comments, as best understood, reflected the view that despite the gaps 250, the micro-focussing elements depicted in Figure 15 still form a regular array, because the micro-focussing elements are still in a periodic arrangement with each other, just some of the elements (the intervening ones) are stripped out.
This view does not appear clearly supported by the specification. Although the description explains that “[i]n the ninth embodiment (Figure 15), the boundary region 250 is formed over the inter array boundary T by omitting the micro lenses 22 in that region” (page 36), there is no indication that the gap width Δr is related to the pitch of the lens array:
“As in the eighth embodiment, the width of the void zone Δr needs to just exceed the sum of the inter array register ±Σ and the variation in register or placement of the lens void zones with respect to the inter panel boundary location, …” (page 36)
In addition, despite Figure 15 being a schematic illustration, the gaps 250 do not appear to fit an integer number of lenses, hence the set of lenses 22ʹ, the set of lenses 22ʺ, and the set of lenses 22‴ do not appear to belong to a single symmetrical lattice or grid characterised by a single lattice constant or pitch.
Macquarie Dictionary (online edition viewed on 26 July 2017) gives 22 definitions for the word “regular”. From these, I consider most relevant the following:
·conforming in form or arrangement; symmetrical;
·characterised by fixed principle, uniform procedure, etc.;
·adhering to rule or procedure;
·orderly; well-ordered;
·conforming to some accepted rule, discipline, etc.;
·Mathematics governed by one law throughout.
Based on the relevant definitions of Macquarie Dictionary, in the context of the claims, I consider that “a regular array of micro-focusing elements” is an array in which the micro-focusing elements are arranged according to certain rules, in other words, there is no randomness in their arrangement.
Hence the two separate arrays of micro-focusing elements of the two separate moiré magnification devices could only be considered as forming a regular array of micro-focusing elements if there is a rule (or a set of rules) defining a specific spatial relationship between the micro-focusing elements of the two arrays. I note that given the small sizes of the micro-focussing elements, the short distances between them, and the inevitable tolerances in the positioning of one of the moiré magnification devices with respect to the other, simply placing the two separate devices side-by-side (e.g. on a security document) would not normally define such a rule (or a set of rules).
Therefore, I conclude that two completely separate moiré magnification devices of different colours positioned side-by-side with a gap “such that an interruption zone of non-zero width is perceived” will be within the scope of claim 1 only if the two devices are positioned relative to each other not randomly or only macroscopically aligned, but in a way that defines a specific spatial relationship between the micro-focusing elements of their two separate arrays.
Inventive Step under Subparagraph 18(1)(b)(ii) and Subsection 7(2)
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])
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)
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)
Relevantly to this opposition, it is important to emphasise that obviousness is a question of fact that is to be established by evidence.
In applying the test of Wellcome Foundation, I need to identify the problem solved by the claimed invention. This is an issue which is strongly contested between the parties in light of the Experts’ evidence, and which appears critically important for the outcome of this decision. Hence it appears to me more appropriate to begin my consideration of inventive step by identifying the person skilled in the art and the common general knowledge in the art which will later help in formulating the problem.
The person skilled in the art and the common general knowledge
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
The Opponent submits that:
“A skilled addressee would have a higher level science or engineering qualification, with either qualifications in physics or industry experience relating to the physics of optical devices including lenses.” (OS at [15])
The Applicant states:
“The skilled addressee of AU’719 [sic, the Application] would be a person with a practical interest in the design or manufacture of security devices for security documents with knowledge of moiré magnifiers (the Field). That person would not be inventive, but would have a reasonable knowledge of the area gained from attendance at conferences, review of textbooks and reviewing published papers.” (AS at [6.4], original emphasis)
I generally agree with the parties, and 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.
With respect to the moiré magnification devices, the Opponent relies primarily on the expert evidence of Dr Jolic, whereas the Applicant relies on the expert evidence of Dr Knight. I note that both Experts do not appear completely independent. Dr Jolic is an employee of the Opponent (Jolic-1 at [1]), whereas Dr Knight is a former employee of the Applicant (Knight at [5-7]). In addition, both Experts have demonstrated inventive disposition (Jolic-1 at [15], AS at [6.6], Knight at [10]).
Regarding Dr Jolic and his evidence, Dr Knight comments:
“Having regard to Dr Jolic’s experience as set out in paragraphs 6 to 15 of the Jolic Declaration, I consider that Dr Jolic’s experience with moiré magnification devices at the Priority Date was significantly greater than that of a typical person skilled in the art of security devices.” (Knight at [163], emphasis added)
“I am concerned that Dr Jolic has arrived at these posited solutions as a result of:
(a) Having prior knowledge of the invention, which I consider is extremely likely, particularly given that the Opposed Application was published in September 2011 and given Dr Jolic's comments at paragraph 13 of his declaration that he regularly reads patent specifications as part of his work (which focused on moiré magnification devices such as that disclosed in the Opposed Application). In paragraph 44 of his declaration, Dr Jolic lists De La Rue International Ltd as the first company he would monitor at the Priority Date;
(b) Being led to the invention by being given a copy of Figure 4 (c) of the Opposed Application [reproduced later in this decision] (see the last page of Annexure KIJ-1) before being asked to devise a solution to the problems posed in the Opposed Application. This page, at the very least, depicts problems with printing two differently coloured microimage arrays which are designed to produce magnified images that are visible at the same time, which are not apparent from or discussed in any of the prior art documents I discuss in this declaration; and / or
(c) Dr Jolic's peculiar knowledge of moiré magnification devices.” (Knight at [180], emphasis added).
Given that the Application is concerned with moiré magnification devices, I do not agree that the person skilled in the art must necessarily be limited to “a typical person skilled in the art of security devices” without “peculiar knowledge of moiré magnification devices”.
With respect of Dr Jolic’s possible prior knowledge of the Application as alleged by Dr Knight, Dr Jolic clearly states:
“The solutions that I devised were based on an understanding of the problem, a knowledge of the way in which printing apparatus operate and an appreciation of the importance of maintaining a correct alignment of images printed by different printing stations in printing apparatus. Whilst I often read patent specifications, I had not read '715 [the Application] prior to providing my answer.” (Jolic-2 at [82], emphasis added)
While I can understand Dr Knight’s concerns about possible prior knowledge, as it will become apparent later in this decision I do not need to decide this issue conclusively. I consider that both Experts are qualified to give evidence in these opposition proceedings, however some caution should be exercised in weighing the evidence to account for the inventiveness of the Experts and their (past or present) affiliations.
The possibility that Dr Jolic was “[b]eing led to the invention” as asserted by Dr Knight will be considered later in this decision.
The common general knowledge
Certain disagreements appear to exist between the parties regarding the common general knowledge, mainly with respect to the use of two or more microimage arrays of different colours and their mutual arrangement. The Applicant submits:
“Regarding the Drinkwater Patent (D1) [US 5712731 A, exhibit KIJ-3], Dr Knight recalled the document but not everything in it. For example, he needed to review the document to appreciate that it also disclosed a device featuring interspersed microimages of the letters ‘A’ and ‘B’ in different colours. Accordingly, if the Drinkwater Patent was common general knowledge, not everything in it was – at best only the material described at Knight [25] was.
Innovia [the Opponent] appears to assert that the idea of providing two side-by-side moiré magnifier arrays in different colours (but with some degree of overlap or at least no spacing between them) was already known at the priority date. That is not the case. Nowhere does AU’715 [the Application] suggest that the side-by-side presentation of magnified images in different colours, as exemplified in Figures 3 and 4 [Figure 4 is reproduced later in this decision], was already known. Figures 3 and 4 are provided to help illustrate the advantages of the invention.” (AS at [8.9-8.10], emphasis added, reference(s) omitted)
With respect to providing microimage arrays of different colours, Dr Jolic explains:
“… I note that a moire magnification device having two arrays in two different colours would not have been surprising in March 2010. A moire magnification device has significant visual appeal as an image is created that appears to float above the device surface or lie beneath it or displays other affects as described in the Nanoventions Paper [exhibit KIJ-5]. This strong visual appeal is one reason why such devices are useful as security devices in security documents and why they had become more widely used by March 2010. By having two image arrays, the device can have two different images. There were examples of moire magnification devices prior to March 2010 that comprised multiple images. An example is the motion thread in the 1000 Krona, an image of which appears in Annexure KIJ-6. Presenting the images in different colours heightens the visual impact of the device. There was a lot of interest prior to March 2010 in presenting images in different colours. For example use of different colours was referred to in the Drinkwater Patent (this is discussed at column 9 lines 4-10 where there is reference to images A and B being in separate colours) and in the Nanoventions application [WO 2006/125224 A2, referred to as D3, exhibit KIJ-7] (this is discussed at page 6 last paragraph to page 7 first paragraph where it is stated that different images in different colours can be combined).
I do not believe there would be any difficulty making a moire magnification device having multiple images in different colours in March 2010. For the reasons I explain below, the difficulty in annexure KIJ-1 [an extract from the specification, in essence, the section “Background” and Figure 4(c)] could be easily avoided as at March 2010.” (Jolic-1 at [34-35], emphasis added)
In contrast, Dr Knight states:
“As at the Priority Date, I was not aware of any commercial devices comprising differently coloured moiré-magnification images. I recall that at the Priority Date, the ‘Motion’ device, ‘© symbol application and the ‘Magic’ Kazakhstan banknote referred to above comprised microimages of the same colour.
I have since been provided with a copy of the Drinkwater patent, which I note discloses a device featuring interspersed microimages of the letters ‘A’ and ‘B’, which it says may be in different colours. In such a device, a viewer would probably see, at one viewing angle, magnified red ‘As’ and at another viewing angle, magnified blue ‘B's’.” (Knight at [38-39]).
“In paragraph 34 of the Jolic Declaration, Dr Jolic claims that a ‘moiré magnification device having two arrays in two different colours would not have been surprising in March 2010[’]. In support of that claim, Dr Jolic refers to (i) the Nanoventions paper (ii) the Motion thread and (iii) the Drinkwater patent.
As I explained in paragraphs 88 to 104 above in relation to the Nanoventions paper and D3, these documents contain very limited information in respect of devices having different colours and were not commonly known at the Priority Date. Further, where D3 discusses, in passing, the possibility of having the microimage arrays in different colours, it suggests that this is to be achieved by having the image arrays in different planes. This is a wholly different approach to that disclosed in the Opposed Application.
With reference to Dr Jolic's second example, the only embodiments of the Motion thread that were commercially available at the Priority Date (such as the 1000 Krona) were all in a single colour.
Finally, the Drinkwater patent also suggests a wholly different approach to the design of magnification devices comprising two arrays of microimages in different colours.” (Knight at [174-177], emphasis added).
It 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. However, as apparent from the above quotations, these documents do not disclose a side-by-side arrangement of two microimage arrays of different colours. With respect to the Nanoventions paper and D3, while Dr Knight considers that these “were not commonly known at the Priority Date”, he nonetheless comments:
“… I agree that the [Nanoventions] paper was known to particular members of the field with specialised knowledge or interest in microimage arrays, such as Dr Jolic.” (Knight at [167], emphasis added)
Regarding D3, Dr Jolic states:
“In my experience, all my colleagues working in the R&D area of the security device industry, particularly in the area of micro-optics, knew of D3 and knew that it was a very important document, as it provided very useful information on moire magnification devices. It is my belief that the information in the document was well known to researchers in this area prior to the priority date. Further, I believe that if at that date a researcher was going to commence a project to design a moire magnification device, the person would review D3 for background information and ideas.” (Jolic-2 at [13])
In line with my earlier discussion, I do not see why the person skilled in the art should not have “specialised knowledge or interest in microimage arrays”. Without conclusively deciding the issue, I am prepared to accept that the Nanoventions paper and D3 were also well known in the art. Regarding the content of the paper, Dr Knight further comments:
“The paper relevantly states, in passing, that one of Nanoventions' Unison films ‘can even contain two Motion images that may be in different colours and may move in opposite ortho-parallactic directions (one left, the other right...).’ The paper does not state whether or not the ‘two’ or more images are visible at the same time or provide any information whatsoever about how such effects could be achieved in practice or on a commercial scale. The sentence from the Nanoventions paper referred to above is followed by the vague statement that ‘the range of possible combinations is endless’. It is not clear, amongst other things, what Steenblik meant by ‘combinations’ in that statement.” (Kinght at [169])
Dr Knight also provides a relatively detailed discussion of D3 (Kinght at [88-104]), and his view of the relevance of the document is:
“Notwithstanding the breadth of D3, I find very little synergy between its disclosure and the Opposed Application (other than perhaps the underlying principles of moiré magnification).” (Knight at [89])
In his second declaration, Dr Jolic also comments on the relevance of D3:
“In paragraph 95, Dr Knight notes that figure 22 of D3 discloses a security thread having three magnified images however there is no interruption zone between these images. However, the idea of an interruption zone is clearly disclosed elsewhere in the document. In this regard, I refer to figures 21(a) and (b). These figures illustrate a thread 508 woven into a substrate 510 so that parts of the substrate are seen in windowed zones 514. Between windows 514 are areas of substrate 512 which overlie and block out parts of thread 508. Hence areas 512 form interruption zones.
Dr Knight states in paragraph 89 of his declaration that there is little synergy between the disclosure of D3 and '715 [the Application]. I do not know what he means by this statement. If he is saying that the disclosure is not relevant, I disagree. I think that the disclosure is very relevant to '715 and the issues addressed by it. Not only does D3 provide very comprehensive information about different types of moire magnification devices, what is disclosed in figures 21(a) and (b) for example, is very relevant to the problem addressed by '715. Figures 21(a) and (b) broadly disclose a moire magnification device in a strip that is threaded through a substrate so that parts of the strip are viewable in windows in the substrate and other areas are hidden. It is clear that such a device could be used to hide any mistakes in the strip. The problem addressed by '715 arises when two arrays are printed in separate print runs to achieve different colours and one array is printed out of register with another. In other words, an error arises if one array can overlap another. I am of the view that it would be obvious to a person in research and development in the security device field seeking to solve this problem that the device of figures 21(a) and (b) provides a useful approach to address this problem. By adopting the arrangement of the security device and substrate of these figures, any error, being the overlap between arrays, could be hidden by the substrate areas between the windows.
In my first declaration, I stated at paragraphs 104 to 106 that the incorporation of moire magnification devices in substrates having multiple windows was well known. Figures 21(a) and (b) are another disclosure of such device and supports this view.” (Jolic-2 at [14-16])
I note that neither of the Experts appears to suggest that Nanoventions paper and D3 clearly disclose a side-by-side arrangement of two microimage arrays of different colours. Nonetheless, in his second declaration, Dr Jolic further clarifies his view on the moiré magnification devices having such an arrangement of microimage arrays:
“… At [sic] stated at paragraph 34 of my first declaration, there was nothing surprising at March 2010 in having two arrays of microimages side by side in a moire magnification device. Clearly this allows the presentation of two virtual images to the viewer, which can be more interesting than one. Presenting one image in one colour and the other in a different colour is a hardly surprising feature either.” (Jolic-2 at [75], emphasis added)
“I do not understand that Dr Knight is suggesting that there was anything surprising in a moire magnification device having two or more arrays positioned side by side and each array being in a different colour. I agree with him on this. Rather I understand that Dr Knight is asserting that overcoming the problem of the two arrays being out of register was inventive. (Jolic-2 at [78], emphasis added)
I am not entirely sure what Dr Jolic means by “surprising”, however I consider Dr Knight’s comments with respect to the fact that Figure 4(c) was provided to Dr Jolic (Knight at [180(b)] as quoted earlier) a strong indication that Dr Jolic’s understanding of Dr Knight’s view might not be entirely correct. Figure 4(a) to (c) is reproduced below for reference and discussed later in this decision.
Dr Jolic further explains:
“In response to paragraph 178 of Dr Knight's declaration, in paragraph of 35 of my declaration I meant that I would have no difficulty at March 2010 making a device having two arrays located side by side and in different colours. Further, I meant that I could overcome the problem identified on page 2 of '715 [the Application] without difficulty.” (Jolic-2 at [79], emphasis added)
I note that Dr Jolic provides all his comments on the issue after he was presented with an illustration of two microimage arrays of different colours positioned side-by-side (i.e. Figure 4(c) and section “Background” as per exhibit KIJ-1). In addition, the examples he gives do not appear to disclose such an arrangement. I am not satisfied by the evidence on file that the side-by-side arrangement of two microimage arrays of different colours was commonly used before the priority date.
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 different colour in moiré magnification devices (Jolic-1 at [34]; Knight at [25, 39]; Jolic-2 at [77]);
·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 problem
As I mentioned earlier, 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
In the section “Background” on page 2, the description states:
“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.
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.”
Later, on page 6, at the beginning of the section “Detailed Description”, it is explained that:
“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. As such, the device provides a multi-coloured appearance which gives a strong, instantly recognisable visual effect.
…
The interruption zone can be generated in a number of ways. It should be noted that, depending on how the interruption zone is generated, the laterally offset microelement arrays themselves may or may not partially overlap one another.”The specification also discusses the case of laterally offset microimage arrays of different colours positioned side-by-side where the registration errors between the two colours are sufficiently small (page 15). Then, according to the specification, undesirable visual effects could appear due to the mis-registration of the micro-focusing elements with respect to the microimage elements (pages 19-20, 22).
The parties’ submissions on the problem
The Opponent starts their discussion of the problem by referring to the quoted above part of the section “Detailed Description” on page 6:
“The Application identifies (page 6, beneath the heading ‘Detailed Description’) a problem of ‘optically distracting effects arising from lateral mis-register +/- Σ between the two colours’, which the Application says can be ‘controlled and reduced to an acceptable level or eliminated entirely’…
The Application asserts that if two adjacent microarrays are printed such that there is an area where the images overlap, then that will mean that there is an area within which the magnified images may overlap, which may be ‘optically distracting’.
It can be seen that simply identifying this problem immediately suggests the solution – print the two arrays so that there is no overlap.” (OS at [30-32], original emphasis)
The Opponent also emphasises that:
“(a) the ‘problem’ that the claims are directed to ‘solving’ is one that is predicated on an assumption that the OVD designer intended that the two underlying microarrays would be located immediately adjacent to one another; but it would be equally obvious to have selected a design that involved a gap between the two microarrays, and even a sizeable gap;
(b) the ‘problem’ is further predicated on the proposition that a hypothetical OVD designer would have intended that the two underlying microarrays be immediately adjacent to one another, and that a printing ‘registration error’ (Σ) resulted in there being an overlap between the microarrays. However, 50% of the time the registration error will be in the other direction, resulting in a gap that would mean that the device fell within the scope of claim 1;
(c) all printers involve registration error (as Dr Knight confirms), and so any skilled person undertaking a multi-pass printing operation will know that they need to make allowance for registration error.” (OS at [35], original emphasis, reference(s) omitted)
Dr Knight was provided with an extract of the specification consisting, in essence, of the section “Background” (exhibit MK-3). He comments:
“The last paragraph of the Extract 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 43(b) above. Whilst these problems may have been appreciated, if one was led to them, at the Priority Date, I do not believe anyone had, at that time, suggested any solution to the problem. At the Priority Date, such a problem may have been attributed less significance or not fully appreciated, particularly given that devices such as those disclosed in the Drinkwater patent and the ‘©’ symbol device discussed above involved the use of one image array as a reference point for the other image array or only disclosed having one of the coloured micro image arrays visible at a particular viewing angle.
The Extract states in the final paragraph on page 2 that ‘it is desired to address or ameliorate one or more disadvantages or limitations associated with the prior art, or at least provide a useful alternative.’ Having read the Extract, I consider that its reference to ‘disadvantages or limitations’ includes the difficulty of printing two microimage arrays in mutual register with another but in different colours.
I have given considerable thought to addressing these issues and have not been able to develop a proposed viable solution that addresses each of these problems apart from those referred to above and, in particular, the positioning problems associated with mutual registration I describe above.” (Knight at [50-52]).
It appears that exhibit MK-3 does not fully represent the extract that was provided to Dr Knight as exhibit MK-3 does not include “the final paragraph on page 2” referred to above. I can only assume that Dr Knight was provided with the full section “Background”.
The problem stated in the section “Background” on page 2 is discussed by the Opponent in the section “C.2.1. Dr Knight’s consideration of a ‘problem’” of the Opponent’s Summary:
“When Dr Knight considered in his declaration the solution to a notional problem, he considered whether a far more difficult problem could be solved; that of achieving two overlapping differently coloured microarrays in mutual registration. He could not think of a solution to that problem. And the Application does not proffer one.” (OS at [38], original emphasis, reference(s) omitted)
“By ‘mutual register’ the Application means that any two individual microimages from the two microimage arrays are reproducibly in the same relative position to each other. As Dr Knight explains, it means that ‘the images in one microimage array … have a fixed relationship with the images in the other array’. Where this is achieved, then if a person randomly selected two banknotes, even from different production runs, the magnified images from each of the two adjacent microarrays would appear in the same relative position to each other at any given viewing angle.
Dr Knight agrees that where multiple colours are being used to print microimages, it is very difficult to print two arrays of microimages in mutual register (see also the clock analogy he gives at paragraph 44).
Innovia [the Opponent] also agrees that achieving a tight tolerance on the registration of two overlapping microarrays of microimages is difficult.
However, the ‘solution’ or ‘amelioration’ of the problem that is identified and made the subject of the claims of the Application is not a solution to that problem…” (OS at [40-43], original emphasis, reference(s) omitted)
The Applicant disagrees with the Opponent’s understanding of the problem:
“… the Applicant contends that Dr Jolic and the Opponent have fallen into error by defining the problem to be solved far too narrowly and in a way that effectively incorporates parts of the teaching of the application that was not part of the common general knowledge. In this way, they have both applied a hindsight approach and adopted, at least in part, the solution to the ‘problem’ given in AU’715 [the Application].
The Applicant considers that the actual problem which the application seeks to address is the provision of a new, multi-coloured moiré magnifier device with a strong optical effect. That description of the problem is sufficiently narrowly focused to give rise to a consideration of what solutions were available at the time.” (AS at [9.8-9.9], reference(s) omitted)
Referring to the evidence, the Applicant further states that:
“AU’715 [the Application] proposes an arrangement of two differently coloured arrays side-by-side as the first part of the solution to the problem, which is notably different from the approaches available previously in the art. The interruption zone is the second part to that solution, which avoids visual confusion which might otherwise arise from overlap.
Dr Jolic does not arrive at his ‘solution’ without having first considered the first part of the Applicant’s solution, namely the arrangement of the two arrays side-by-side. In particular, he was given figure 4(c) of AU’715 as part of the ‘problem’.” (AS at [9.10-9.11], original emphasis, reference(s) removed)
The formulation of the problem
It appears that the main point of disagreement between the parties regarding the problem formulation is whether the arrangement of side-by-side arrays of microimages in different colours (as e.g. illustrated on Figure 4(a) to (c)) is part of the problem or part of the solution.
I will return to the problem formulated in the section “Background” on page 2 of the specification (emphasis added):
“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.”
While the specification appears silent about any possible prior art attempts at solving the problem or indeed to implement multicolour effects, several disclosures contemplating multicolour devices were discussed earlier in this decision with respect to the common general knowledge. The discussion of the Drinkwater patent, the Nanoventions paper and D3 suggests that positioning two arrays of microimages of different colours side-by-side as proposed by the Application is not the only possible way to “achieve multicolour effects in which two or more images are obtained in different colours” where “the difficulty of printing two microimage arrays in mutual register with one another but in different colours” can lead to undesirable visual effects. It appears that a variety of design patterns employing two or more colours could be implemented. In addition to what is proposed in the above mentioned disclosures, one could simply consider e.g. providing each microimage as two parts (or sub-images) in different colours.
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.
I will also return to the beginning of the section “Detailed Description” on page 6 (quoted above) which explains that “[b]y arranging the different coloured microimage elements in two different, laterally offset arrays, and … , 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”. In my view, this wording, combined with its location within the specification, clearly indicates that the side-by-side arrangement of the two microimage arrays of different colours is presented as part of the way in which the optically distracting effects can be reduced or eliminated. Hence it is presented as part of the proposed solution to the problem stated in the section “Background” on page 2. As I already mentioned, the evidence does not suggest that this arrangement was well known or widely used at the priority date.
In addition, I note that the description does not clearly identify Figure 4(a) to (c) as illustrating a prior art arrangement:
“Figure 4a schematically shows an example of out of register microimage arrays, Figures 4b and 4c depicting portions of its microimage arrays with exemplary magnified images overlaid;” (page 4)
“An example of microimage array mis-registration is shown in Figure 4, wherein we see that the central microimage array 110 (corresponding to the image panel 11 with ‘20’ icons) of the microimage element array 100 has shifted downwards relative to the two ‘crest’ arrays 120' and 120" – causing a gap G to appear unintentionally between the arrays 110 and 120", and of more concern it causes an overlap OV of the two micro image arrays 110 and 120' in the lower image zone. This results in an uncontrolled overlap which is disturbing to the viewer and thus uncontrolled interference between the two synthetically magnified image panels 11, 12 leading to a loss or reduction in image integrity. To the observer the asymmetry in the appearance of the interfaces between the image panels and the loss of image quality / integrity will at best be discerned as a visually obtrusive manufacturing error and at worst will serve to confuse the observer as to what optical variable security effect they are meant to be observing.
…
Figure 4(b) [should be 4(c)] shows a further enlarged portion of the Figure 4 device in the region of the overlap OV between microimage arrays 110 and 120'. As in the case of Figures 2(c) and 3(c) this Figure illustrates both the magnified image elements 11, 12 and the microimage element arrays 110, 120 but in practice only the magnified images will be visible. Due to the lower microimage array 120' having been applied out of register with the upper array 110, the lower array shifts up to cross the notional interface and overlaps or collides with the upper micro image array. Since the overlap is between two uncorrelated image arrays, the effect of one array is to compete with and mask the other – i.e. the two arrays interfere in an uncooperative way producing a magnified image zone or band with uncontrolled image contributions from each array. To mitigate the deleterious effect of such an overlap the inventors propose the creation of an interruption zone between the magnified image panels 11, 12 in which no magnified version of either of the microimage arrays is generated. This eliminates any overlap of the magnified images and thus alleviates the above-noted problems.” (pages 23-24)Based on the above discussion, on balance, I consider it more appropriate to regard the side-by-side arrangement of two microimage arrays of different colours as part of the solution rather than part of the problem. I also consider that Figure 4(a) to (c) is not intended to represent a general illustration of the problem to be solved, but instead illustrates the manifestation of the issue of colour mis-registration in the specific design having two microimage arrays in different colours printed side-by-side immediately adjacent to each other.
I conclude that the problem to be solved by the invention should be formulated as how to provide a moiré 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 invention defined in claims 1 and 15 solves this problem by utilising a specific design of the moiré magnification device, in which two microimage arrays of different colours are arranged side-by-side and the device is further designed in a way to create an interruption zone between the magnified images of the two arrays of different colour.
In claim 33, the problem is solved by designing the moiré magnification device such that two microimage arrays of different colours are arranged side-by-side, and then the moiré magnification device is incorporated into or applied on to a document substrate having at least two windows in a way that the potential overlapping region of the two arrays where the moiré magnification device could exhibit undesirable visual effects is covered or hidden by the document substrate between the windows.
Having formulated the problem, I will now discuss the question of obviousness of the claimed invention.
Is claim 1 obvious in light of the common general knowledge?
Dr Jolic was provided with an extract from the specification (exhibit KIJ-1 as mentioned earlier ) consisting of the section “Background” without the last paragraph and Figure 4(c), and asked “to describe any approaches that would have been apparent to [him] and apparent to [his] colleagues to have taken as at March 2010 to address this problem”, basing his answer on “knowledge [he] had obtained up until March 2010” (Jolic-1 at [17b]).
Dr Jolic states:
“I turn then to the asserted problem set out on page 2 at paragraph 3. I understand that what is being discussed here is printing one array of images in one colour and printing another array of images in another colour, the arrays being in a fixed or controlled position relative to each other. The figure which is included in Annexure KIJ-1 illustrates this. In this figure there is an array of 20's and an array of ‘crests’. I further understand that the problem is discussing the printing of the arrays in separate print runs in order to obtain the different colours. However when this is done, the intended position of one array relative to the other, may not be maintained. The reason for this is that when a printing process is carried out, there is a certain tolerance in the position of the printed image. For example, in a conventional gravure printing process carried out at around 2010 and earlier, the tolerance was typically plus or minus 250μm (relative to a reference design template). Hence if such a process is carried out to print two micro image arrays in separate print runs and with the image arrays adjacent to each other, then unless the image arrays are separated by a space of at least 500μm (being double the maximum tolerance) then the two arrays may overlap. Consequently, the magnified images could overlap. This is what is shown in the figure. The array of crests overlaps with the array of the ‘20's’ with the result that the magnified images also overlap.” (Jolic-1 at [33], emphasis added).
“I do not believe there would be any difficulty making a moire magnification device having multiple images in different colours in March 2010. For the reasons I explain below, the difficulty in annexure KIJ-1 could be easily avoided as at March 2010.
One approach to avoid the difficulty of the two arrays overlapping is to increase the spacing between the image arrays to greater than the print tolerance. In the case of using the gravure printing process for example, the arrays could be separated by a space greater than 500μm. This should result in avoiding any overlap of the magnified images and separation of these images. To be certain there would be no overlap, the space separating the arrays could be increased to around 700μm. I note that increasing the separation to the image arrays would increase the separation of the magnified images. It may be that creating a gap between the magnified arrays would be a desirable visual feature.” (Jolic-1 at [35-36])
“In my view the approach I describe above is an obvious one to take to address the issue referred to on paragraph 3 of page 2 of the annexure KIJ-1. It amounts to working within the known tolerances of the printing process or just designing for such registration tolerances. I am of the opinion that my colleagues would have readily identified this approach to address the issue.” (Jolic-1 at [38])
In contrast, Dr Knight states:
“I consider that the solution devised by the inventors to the problems associated with printing micro-image arrays in different colours on a security device is inventive, and certainly something that did not occur to me when DCC [Davies Collison Cave] posed the same problems.” (Knight at [63]).
As I already noted earlier when discussing the person skilled in the art, with respect to the solution provided in Jolic-1, Dr Knight comments:
“I am concerned that Dr Jolic has arrived at these posited solutions as a result of:
…
(b) Being led to the invention by being given a copy of Figure 4 (c) of the Opposed Application (see the last page of Annexure KIJ-1) before being asked to devise a solution to the problems posed in the Opposed Application. This page, at the very least, depicts problems with printing two differently coloured microimage arrays which are designed to produce magnified images that are visible at the same time, which are not apparent from or discussed in any of the prior art documents I discuss in this declaration;…” (Knight at [180], emphasis added)To this Dr Jolic replies:
“I note that the problem that is clearly identified at page 2 of '715 [the Application] is printing two microimage arrays in mutual register with each other and using a different colour for each array. When using printing apparatus readily available at March 2010, each array is printed at a separate print station or print run that prints for a specified colour. The two arrays have to be in a controlled position relative to each other. If they are not the arrays could overlap or could be too far apart. The figure that forms part of annexure KJ-1 simply shows two arrays out of register. It shows what I understand is being discussed at page 2 of '715. I do not see how figure 4(c) leads to the claimed invention any more than describing the problem in words.” (Jolic-2 at [81])
Dr Jolic was provided with exhibit KIJ-1 which he characterises as “three pages from a patent specification … which set out some background matters, a problem and a depiction of a moire magnification device” (Jolic-1 at [17b]) and asked to address the problem. It was normal for Dr Jolic to assume that exhibit KIJ-1 in its entirety describes the problem to be addressed. Hence, in his first declaration, Dr Jolic interprets the problem stated on page 2 of the description in light of what is shown on Figure 4(c). With respect to the above statement of his second declaration, I do not entirely agree with Dr Jolic that Figure 4(c) “simply shows two arrays out of register”. While indeed the figure does show that the arrays are “out of register”, it also shows that the two arrays are side-by-side, something that I do not consider ascertainable by the text on page 2 alone.
100. I have already discussed this figure and concluded that it cannot be considered as a general illustration of the problem being solved by the Application. I consider that providing the figure as if it was part of the background information in the specification resulted in much narrower interpretation of the problem by Dr Jolic which included the side-by-side arrangement of the two microimage arrays of different colours. Hence I consider that Dr Jolic was provided not just with the problem, but also with part of the solution. In view of this, the evidence of Dr Jolic does not sufficiently support the assertion of obviousness for claim 1 in light of the common general knowledge.
101. During the hearing, the Opponent expressed the view (as best understood) that even if the claim provides a solution to some contrived problem, if something obvious is within its scope, then the claim is obvious. The Opponent referred to providing two separate moiré magnification devices of different colours side-by-side with a gap as something obvious and within the scope of claim 1. Without deciding on the obviousness of this arrangement, as I discussed earlier, it will be within the scope of claim 1 only if the two devices are positioned relative to each other not randomly or only macroscopically aligned, but in a way that defines a specific spatial relationship between the micro-focusing elements of their two separate arrays. I am not presented with any evidence that this way of positioning the two separate devices would be obvious.
102. As quoted earlier, the Opponent also asserts that “the ‘problem’ is further predicated on the proposition that a hypothetical OVD designer would have intended that the two underlying microarrays be immediately adjacent to one another, and that a printing ‘registration error’ (Σ) resulted in there being an overlap between the microarrays. However, 50% of the time the registration error will be in the other direction, resulting in a gap that would mean that the device fell within the scope of claim 1” (OS at [35(b)]). As discussed, I consider the two arrays being side-by-side or “adjacent to one another” as part of the solution and not part of the problem being solved. Even if I generally agree with the Opponent that the hypothetical scenario presented by them might potentially produce something within the scope of claim 1 (subject to an interruption zone of non-zero width being perceived between the magnified versions of the arrays), I am unable to identify evidence pointing towards the obviousness of this hypothetical scenario.
103. In conclusion, based on the evidence on file, I am not satisfied that the Opponent has established to the required standard of proof that claim 1 is obvious in light of the common general knowledge.
Inventive step conclusion
104. With respect to claim 15, the Opponent submits that “[c]laim 15 is merely claim 1 redrafted as a method claim” (OS at [56]). I generally agree with the Opponent’s analysis, and it follows that I am equally not satisfied that the Opponent has established to the required standard of proof that claim 15 is obvious in light of the common general knowledge.
105. With respect to claims 33 to 37, the Opponent submits that “[t]hese claims simply claim security documents that incorporate OVDs meeting the description of preceding claims” (OS at [71]). At the hearing, I drew the Opponent’s attention to the main differences between claim 33 and the already discussed claims 1 and 15, and in particular to the fact that in claim 33 the moiré magnification device is designed such that there is no requirement for an interruption zone, however the regions of possible overlap between the two microimage arrays are masked by the security document. The Opponent referred to the 1000 Krona banknote and submitted (as best understood) that the claim is directed to obscuring the lenses which is no different and entirely obvious, and that if one decides to use separate windows in a document substrate, the asserted problem will not arise.
106. Given my formulation of the problem, I do not agree that in the above case the problem will not arise. Rather, the above case is an example of selecting a suitable arrangement, in which the colour mis-registration does not cause strong distracting visual effects. In other words, the fact that the undesirable consequences of the problem do not manifestly appear is not an indication that the problem does not arise, but indeed in indication that the proposed design arrangement ameliorates the problem.
107. With respect to claim 36 as accepted, which is identical to present claim 33, Dr Jolic comments:
“In relation to claim 36, I note that it was well known prior to March 2010 to incorporate a moire magnification device in a strip form into a note substrate so that the device was viewable through windows in the substrate. The Swedish 1000 Kronar was a good example of this. Whether to use a moire magnification device in a document in this way is a design choice.
I also note that one of the approaches that I thought of to address the problem was to apply a print layer over the micro focusing elements in the area of the overlap of the 2 arrays. In other words, covering over the overlap area.
In my opinion, if I was incorporating a moire magnification device into windows into a substrate, it would be obvious to take advantage of the windows and position the device relative to the windows so that the space between the windows covered over the boundary between the image arrays of the moire device.” (Jolic-1 at [104-106])
108. I note that Dr Jolic refers to his solution of the problem he was presented with. As already discussed, this also included part of the solution illustrated on Figure 4(c). I also note that the Swedish 1000 Krona banknote has a completely different arrangement of microimage arrays (not side-by-side) and they are of the same colour (Knight at [193]). In view of the problem formulated earlier, I am not satisfied that the Opponent has established to the required standard of proof that claim 33 is obvious in light of the common general knowledge.
109. The Opponent raises the ground of inventive step only in light of the common general knowledge considered separately. As I noted earlier, although several prior art documents were filed in evidence, the Opponent does not rely on any of them to establish lack of inventive step. Given this, it is not unreasonable to conclude that the Opponent does not believe that lack of inventive step in light of any of these documents could be established, and de facto has accepted Dr Knight’s view:
“Overall, I consider that none of the items of prior art referred to above disclose all of the features of the invention claimed in the Opposed Application. Further, particularly in circumstances where:
(a) any reference to colour in the documents is vague and fleeting; and
(b) the documents do not recognise or discuss the mutual registration problems identified in the Opposed Application,
I consider that the documents would not have led me to the invention claimed in the Opposed Application.” (Knight at [159]).
110. Therefore, I do not consider it necessary to discuss these prior art documents.
111. In conclusion, I am not satisfied that the Opponent has established to the required standard of proof that any one of claims 1, 15, and 33 does not involve an inventive step. Dependent claims 2 to 14, 16 to 32, and 34 to 37 add further features, hence I am not satisfied that the Opponent has established to the required standard of proof that any one of claims 1 to 37 does not involve an inventive step.
Manner of Manufacture under Paragraph 18(1)(a)
112. The Opponent raises this ground in view of Merck & Co Inc v Arrow Pharmaceuticals Limited [2006] FCAFC 91 and NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd [1995] HCA 15, and submits:
“As noted above, the Application identifies a relevant problem of the existence of ‘optically distracting effects’ which are said to ‘aris[e] from lateral mis-register +/- Σ between the two colours’. The solution to that problem is to simply print the differently coloured arrays without overlap, and the lack of the necessary quality of inventiveness is apparent on the face of the specification.
Dr Knight says that Dr Jolic was led to the invention by being given a copy of figure 4c before being asked to devise a solution to the problems posed in the Opposed Application. However, figure 4c depicts an array having the problem described and provides no further information. If the Applicant asserts that this leads the skilled addressee to the solution, this is a recognition that the solution is apparent from a mere statement of the problem.” (OS at [74-75], emphasis in bold added, reference(s) omitted)
113. I have already discussed Figure 4(c) and concluded that it cannot be considered as a general illustration of the problem, as it includes two microimage arrays in a side-by-side arrangement. In addition, I have not found that the claims of the Application are obvious. It logically follows that the ground of manner of manufacture as raised by the Opponent cannot succeed.
Conclusion and Costs
114. I did not find that the invention defined in any one of the claims does not involve an inventive step. I also did not find that the claimed invention is not a manner of manufacture. As these were the only grounds of opposition relied on by the Opponent, it follows that the opposition is unsuccessful on all grounds.
115. It is a normal practice that the cost should follow the event and the submissions of both parties are along these lines (AS at [11.1]; OS at [76], further clarified at the hearing after my specific request to do so). Although the specification was amended during the opposition, the Opponent’s submissions appear to suggest that the Opponent does not believe that these amendments had the potential to affect the outcome of the opposition. I do not have sufficient reasons to disagree with the parties and to deviate from the normal practice in awarding costs. As the opposition is unsuccessful on all grounds, I award costs according to Schedule 8 against the Opponent.
Dr V. Z. Kolev
Delegate of the Commissioner of Patents
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