CCL Secure Pty Ltd v De La Rue International Limited

[2024] APO 49

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

CCL Secure Pty Ltd v De La Rue International Limited [2024] APO 49

Patent Application:             2016330005

Title:Security print media and method of manufacture thereof

Patent Applicant:                De La Rue International Limited

Opponent:CCL Secure Pty Ltd

Delegate:Xavier Gisz

Decision Date:  5 December 2024

Hearing Date:  4 September 2024

Catchwords:  PATENTS - section 59 opposition to the grant of a patent - grounds of opposition: novelty, inventive step, support, clarity - security documents – overlapping opacifying layers - opposition unsuccessful - costs awarded

Representation:                   Counsel for the Applicant: Clare Cunliffe

Patent attorney for the Applicant: Nik Ramchand and Emily Maartensz of Davies Collison Cave
Counsel for the Opponent: Craig Smith SC

Patent attorney for the Opponent: Ian Lindsay and Dan Bolderston of Allens Patent & Trade Mark Attorneys

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application:             2016330005

Title:Security print media and method of manufacture thereof

Patent Applicant:                De La Rue International Limited

Date of Decision:                5 December 2024

DECISION

The opposition is unsuccessful. Claims 1-16 are novel and inventive in light of the prior art documents raised by the Opponent. The claimed invention is supported by the specification and the claims are clear.

Costs are awarded against the Applicant up to the day the parties were informed that the amendments were allowed (17 February 2023). Costs are awarded against the Opponent from the day after the amendments were allowed (18 February 2023).

REASONS FOR DECISION

Background

1. Patent application 2016330005 in the name of De La Rue International Limited (the Applicant) is the national phase entry of WO 2017/055823 (application number PCT/GB2016/052996), with a filing date of 27 September 2016 and a priority date of 29 September 2015. Acceptance was advertised on 25 November 2021.

2. A Notice of Opposition was filed by CCL Secure Pty Ltd (the Opponent) on 25 February 2022. A Statement of Grounds and Particulars (SGP) was filed on 24 May 2022.

3. Evidence in Support was filed on 24 August 2022.

4. Amendments to the description and claims were proposed on 14 October 2022. On 16 November 2022 the Delegate made a direction to stay the opposition until four weeks after the Commissioner advised the parties that the amendments are allowed (following the opposition period), refused or withdrawn. The parties were advised on 17 February 2023 that the amendments had been allowed.

5. The Applicant filed Evidence in Answer on 16 March 2023. Evidence in Reply was filed on 17 May 2023.

6. On 16 June 2023 both parties indicated that they intended to take additional actions (including amending the statement of grounds and particulars (“SGP”) and challenging the evidence in reply (“EIR”) and/or making a request under Reg 5.23) before the hearing could be set.

7. On 16 August 2023 the Applicant challenged that the Evidence in Reply was not properly in reply (to the Evidence in Answer).

8. On 18 August 2023 the Opponent made a first request proposing amendments to the SGP.

9. On 5 October 2023 the Delegate directed that the following parts of the Evidence in Reply were not properly in reply:

   paragraphs 78, 80, 83 to 85, 91, 93, 94, 96 to 98, 102, 106(a), 108(c), 108(f), 109(c), 111(a), 111(c), 111(d), 112(a), 112(c), 112(d), 112(f), 112(g), the final sentence of 114(c), the final 5 sentences of 115(a), 115(e), 116(a), 116(b), 116(c) and figures 7, 8, 10 to 14, 20 to 25, 30, 31 and 35 to 38 of the declaration by Amanda Louise Jones dated 17 May 2023; and

   paragraphs 11 to 23 of the declaration of Lachlan McDonald dated 15 May 2023 and exhibits LM-1 to LM-5 to this declaration.

10. On 25 October 2023 the first request to amend the SGP were refused.

11. On 27 October 2023 the Opponent requested that the evidence found to be not properly in reply, be considered under reg 5.23. The Opponent also argued that the amendments to the SGP should be allowed.

12. On 19 December 2023 the Delegate informed the parties that the Commissioner would consider the following information under reg 5.23:

    That the Commissioner will consult paragraphs 78, 80, 83 to 85, 91, 93, 94, 96 to 98, 102, 106(a), 108(c), 108(f), 109(c), 111(a), 111(c), 111(d), 112(a), 112(c), 112(d), 112(f), 112(g), the final sentence of 114(c), the final 5 sentences of 115(a), 115(e), 116(a), 116(b), 116(c) and figures 7, 8, 10 to 14, 20 to 25, 30, 31 and 35 to 38 of the declaration by Amanda Louise Jones dated 17 May 2023.

13. On 26 February 2024 the Applicant filed responding information under reg 5.23(2)(c).

14. On 31 January 2024 the Opponent filed a second request proposing amendments to the SGP. On 29 February 2024 the Delegate refused these proposed amendments.

15. On 7 March 2024 the Opponent made a third request proposing amendments to the SGP. On 22 May 2024 the third request to amend the SGP was allowed. Reference from hereon are to the SGP as amended pursuant to the third request.

    Applicable Law and Onus

16. The present application is governed by the Act as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 as the application was filed after 15 April 2013.

17. The Opponent has the onus to satisfy me, on a balance of probabilities, that a ground of opposition to grant exists. Then, if satisfied, I may refuse the application or, where appropriate, give the Applicant a reasonable opportunity to amend the relevant specification to remove any ground of opposition, as per Section 60(3A) & (3B) of the Act.

    Evidence

    Evidence in support

18. Declaration by Amanda Jones dated 31 March 2022 (first Jones declaration) and accompanying exhibits ALJ-1 to ALJ-4.

19. Declaration by Amanda Jones dated 23 August 2022 (second Jones Declaration) and accompanying exhibits ALJ-5 to ALJ-12.

20. Declaration by Daniel Bolderston dated 23 August 2022 and accompanying exhibits DSB-1 to DSB-24

    Evidence in answer

21. Declaration by Gary Power dated 15 March 2023 and accompanying exhibits GP-1 to GP-7.

    Evidence in reply

22. Declaration by Amanda Jones dated 17 May 2023 (third Jones Declaration) and accompanying exhibits ALJ-13 to ALJ-15.

23. Declaration by Lachlan McDonald dated 15 May 2023 and accompanying exhibits LM-1 to LM‑5.

    Summary of whether the evidence in reply is properly in reply and reg 5.23 information

24. On 5 October 2023 the Delegate directed that the following parts of the Evidence in Reply were not properly in reply:

    paragraphs 78, 80, 83 to 85, 91, 93, 94, 96 to 98, 102, 106(a), 108(c), 108(f), 109(c), 111(a), 111(c), 111(d), 112(a), 112(c), 112(d), 112(f), 112(g), the final sentence of 114(c), the final 5 sentences of 115(a), 115(e), 116(a), 116(b), 116(c) and figures 7, 8, 10 to 14, 20 to 25, 30, 31 and 35 to 38 of the declaration by Amanda Louise Jones dated 17 May 2023; and

    paragraphs 11 to 23 of the declaration of Lachlan McDonald dated 15 May 2023 and exhibits LM-1 to LM-5 to this declaration.

25. On 19 December 2023 the Delegate informed the parties that the Commissioner would consider the following information under reg 5.23:

    That the Commissioner will consult paragraphs 78, 80, 83 to 85, 91, 93, 94, 96 to 98, 102, 106(a), 108(c), 108(f), 109(c), 111(a), 111(c), 111(d), 112(a), 112(c), 112(d), 112(f), 112(g), the final sentence of 114(c), the final 5 sentences of 115(a), 115(e), 116(a), 116(b), 116(c) and figures 7, 8, 10 to 14, 20 to 25, 30, 31 and 35 to 38 of the declaration by Amanda Louise Jones dated 17 May 2023.

26. In other words the following was found to be not properly in reply and was not relied upon under reg 5.23:

    paragraphs 11 to 23 of the declaration of Lachlan McDonald dated 15 May 2023 and exhibits LM-1 to LM-5 to this declaration.

    Person skilled in the art

27. The specification is to be construed through the eyes of the person skilled in the art, being a notionally non-inventive skilled worker aware of the common general knowledge in the relevant field. In KD Kanopy Australasia Pty Ltd v Insta Image Pty Ltd [2007] FCA 481; 71 IPR 615 Kiefel J identified ([16]) the person skilled in the art as:

    “...a person acquainted with the surrounding circumstances of the state of the art and manufacture at the relevant time...They are likely to have a practical interest in the subject matter of the invention...and may often work in the art with which the invention is connected.”

28. In Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980; 9 IPR 225, Finkelstein J stated at [70]:

    “He is the person to whom the patent is addressed and who must construe it. He is the person whose knowledge will determine whether a patent is novel. He is the person who will judge whether a patent is obvious.”

29. In AstraZeneca AB v Apotex Pty Ltd [2015] HCA 30 at [23], the High Court additionally noted that:

    “The notional person is not an avatar for expert witnesses whose testimony is accepted by the court. It is a pale shadow of a real person – a tool of analysis which guides the court in determining, by reference to expert and other evidence, whether an invention as claimed does not involve an inventive step.”

30. Expert evidence has been provided by Amanda Jones, Gary Power, Daniel Bolderston and Lachlan McDonald. The background of each expert is briefly summarised below.

31. Amanda Jones is the currently the art director, security designer, and bank note designer at 30-1 Design, an independent design business which she established in 2007. Ms Jones has 20 years of experience in the industry first commencing employment in 1998 with Note Printing Australia (NPA) as an engraving artist. NPA is owned by the Reserve Bank of Australia and produces banknotes that are used in Australia and various other countries, as well as Australian passports. During her employment with NPA, Ms Jones became involved in concept design and, in particular, polymer banknote design. Over the course of her 20 years working in the industry, Ms Jones has designed more than 63 banknotes which are currently in circulation worldwide (first Jones declaration paragraphs 9-12).

32. Gary Power is the former Global Managing Director and Global Vice President of CCL Secure Pty Ltd. Mr Power has considerable industry experience in the research and development of polymer substrates for polymer bank notes and other security features such as creating microstructures to produce optical effects. Mr Power’s expertise in the design relating to security documents is highlighted by the fact that he has been named as inventor or co-inventor on a large number of patent applications (Power declaration paragraphs 6-19).

33. Lachlan McDonald is the Technical Services Manager of CCL Secure Limited and has worked in the banknote industry for 28 years (McDonal declaration paragraphs 1-7).

34. Daniel Bolderston is a patent attorney at Allens Patent & Trade Mark Attorneys (Allens) which has carriage of the present opposition proceedings on behalf of the opponent. The purpose of Mr Bolderston’s declaration was place into evidence images of various countries’ banknotes and various other themed banknotes (Bolderston declaration paragraph 1).

35. Each of Ms Jones, Mr Power and Mr McDonald have experience and knowledge of security devices for banknotes and their expert opinions will be relied upon to determine the issues in this opposition.

    Grounds of Opposition

36. The amended Statement of Grounds and Particulars of the opposition contained the following grounds: novelty, inventive step, manner of manufacture, clarity and succinctness, support, clear enough and complete enough, and best method.

37. The submissions were limited to the following grounds: novelty, inventive step, support, and clarity.

    The invention

38. The invention is a multi-tonal image of a three-dimensional object formed from overlapping opacifying layers on a transparent substrate. The three-dimensional image has sub-images formed in a plurality of gaps.

39. One embodiment of the invention is shown in Figure 4. The overlapping opacifying regions create differing densities of opacity. The result is an image that looks like a hemisphere, with the greatest opacity at the centre (10a) where there are four overlapping opaque layers, then the next concentric area (10b) with 3 overlapping layers, 10(c) with 2 overlapping layers, and lastly 10(d) with only one opacifying layer. This is surrounded by a transparent region (12) that forms a halo around the image of the hemisphere.

40. The embodiment of figure 4 does not include the feature of a half-tone print layer.

41. Another embodiment is shown in figure 6 includes a half-tone print layer:

42. The accompanying description states:

    “A further optional but beneficial feature will now be described with reference to Figure 6. Figure 6(a) shows an exemplary raised pattern layer 13 which may be applied over the outermost opacifying layer(s) across the region 9 of the medium 1. For instance, in the Figure 1/2 embodiment, the raised pattern layer 13 may be applied over the opacifying layer 6d on the first surface of the substrate 5, and/or over the opacifying layer 6c on the second surface of the substrate 5. The raised pattern layer may comprise for example a colourless, transparent ink which is applied to the medium 1 in accordance with a screen pattern, the elements of which are large enough to be individual discernible to the naked eye (possibly only under close inspection). For example, the raised pattern layer 13 may be applied in the form of an array of line or dot screen elements. In this case, the raised pattern layer is in the form of a grid of lines as shown. The raised pattern layer may be applied by intaglio printing for example and preferably has a latent appearance in that its presence is less visible when the medium is viewed at some angles, relative to others. At certain viewing angles, which depend on the location of the illuminating light source, the raised image pattern will reflect light more strongly to the viewer, and thus become more visible, than at other viewing angles. The pattern 13 may or may not be directly related to the content of the multi-tone image 10. In this example, the raised pattern layer extends across the same region 9 but otherwise does not reflect the features of the multi-tone image, instead comprising a grid pattern, the line weight of which varies from left to right across the region such that it fades to absent on the right side of the region 9. Preferably the raised pattern layer is tactile (i.e. can be detected by human touch), but this is not essential.”

    Claims

    Independent claims

43. Amendments to the claims were proposed during the opposition on 14 October 2022 and allowed on 17 February 2023.

44. The amended claims comprise 16 claims – 4 independent claims and 12 dependent claims. A marked-up version of the independent claims (with words in underline added and words in strikethrough removed from the claims as accepted) is reproduced below:

    Claim 1:

    1. A security print medium for forming security documents therefrom, comprising a transparent or translucent polymer substrate having first and second opposing surfaces, and a plurality of overlapping opacifying layers disposed on the first and/or second surfaces of the polymer substrate, each of the opacifying layers being a layer of semi-opaque material disposed over substantially the whole area of the polymer substrate, wherein in at least a region of the substrate a multi-tonal image of a three-dimensional object is exhibited by the plurality of overlapping opacifying layers in combination with one another, at least when the security print medium is viewed in transmitted light, each of the plurality of overlapping opacifying layers having gap(s) in which the semi-opaque material of the layer is absent, the gap(s) of each layer being defined in accordance with a different respective sub-image, the sub-images in combination defining the multi-tonal image, wherein either all the sub-images are different negative image versions of the multi-tonal image or all the sub-images are different positive image versions of the multi-tonal image, whereby the number of opacifying layers overlapping one another at any one location varies across the substrate, the resulting variation in optical density of the plurality of overlapping opacifying layers in combination with one another giving rise to the multiple tones of the multi-tonal image, and wherein:

    (i) at least some of the sub-images are multi-tonal, half-tone sub-images, the security print medium further comprising one or more additional opacifying layers each comprising a layer of semi-opaque material disposed over substantially the whole area of the polymer substrate, and each extending continuously across the region of the substrate containing the multi-tonal image; and/or

    (ii) the security print medium further comprises a mono-tone or multi-tone print of at least part of the multi-tonal image in one or multiple colours which contrast visually with the opacifying layers, the multi-tone print comprising at least one multi-tone, halftone print working, and the multi-tone print being located between at least one of the opacifying layers and the polymer substrate on the first and/or second surfaces thereof, the multi-tone print of the multi-tonal image being in alignment with the subimages in the opacifying layers.

    Claim 8:

    8. A security print medium for forming security documents therefrom,  comprising a transparent or translucent polymer substrate having first and second opposing surfaces, and a plurality of overlapping opacifying layers disposed on the first and/or second surfaces of the polymer substrate, each of the opacifying layers being a layer of semi-opaque material disposed over substantially the whole area of the polymer substrate, wherein in at least a region of the substrate a multi tonal image of a three-dimensional object is exhibited by the plurality of overlapping opacifying layers in combination with one another, at least when the security print medium is viewed in transmitted light, each of the plurality of overlapping opacifying layers having gaps in which the semi-opaque material of the layer is absent, the gaps of each layer being defined in accordance with a different respective sub-image, the sub-images in combination defining the multitonal image, wherein either all the sub-images are different negative image versions of the multi-tonal image or all the sub-images are different positive image versions of the multi-tonal image, whereby the number of opacifying layers overlapping one another at any one location varies across the substrate, the resulting variation in optical density of the plurality of overlapping opacifying layers in combination with one another giving rise to the multiple tones of the multi-tonal image, the security print medium further comprising at least one transparent window region formed by aligned gaps in each of the opacifying layers, the at least one transparent window region substantially surrounding the multi-tonal image, and wherein:

    (i) at least some of the sub-images are multi-tonal, half-tone sub-images; and/or

    (ii) the security print medium further comprises a mono-tone or multi-tone print of at least part of the multi-tonal image in one or multiple colours which contrast visually with the opacifying layers, located between at least one of the opacifying layers and the polymer substrate on the first or second surfaces thereof, the print of the multi-tonal image being in alignment with the sub-images in the opacifying layers.

    Claim 10:

    1110. A method of making a security print medium, comprising:

    providing a transparent or translucent polymer substrate having first and second opposing surfaces;

    applying a plurality of overlapping opacifying layers onto the first and/or second surfaces of the polymer substrate, each of the opacifying layers being a layer of semi-opaque material disposed over substantially the whole area of the polymer substrate, each opacifying layer being applied in accordance with a different respective sub-image across at least a region of the substrate;

    whereby each of the plurality of overlapping opacifying layers has gap(s) in which the semi-opaque material of the layer is absent, the gap(s) of each layer being defined in accordance with a different respective sub-image, the sub-images in combination defining a multi-tonal image of a three-dimensional object which is exhibited by the plurality of overlapping opacifying layers in combination with one another, at least when the security print medium is viewed in transmitted light, wherein either all the sub-images are different negative image versions of the multi-tonal image or all the sub-images are different positive image versions of the multi-tonal image, whereby the number of opacifying layers overlapping one another at any one location varies across the substrate, the resulting variation in optical density of the plurality of overlapping opacifying layers in combination with one another giving rise to the multiple tones of the multi-tonal image and wherein:

    (i) at least some of the sub-images are multi-tonal, half-tone sub-images, the method further comprising applying one or more additional opacifying layers each comprising a layer of semi-opaque material disposed over substantially the whole area of the polymer substrate, and each extending continuously across the region of the substrate containing the multi-tonal image; and/or

    (ii) the method further comprises applying a mono-tone or multi-tone print of at least part of the multi-tonal image in one or multiple colours which contrast visually with the opacifying layers, the multi-tone print comprising at least one multi-tone, half-tone print working, the multi-tone print of the multi-tonal image being in alignment with the sub-images in the opacifying layers, wherein the multi-tone print is applied to the substrate before at least one of the opacifying layers is applied.

    Claim 15:

    15. A method of making a security print medium, comprising:

    providing a transparent or translucent polymer substrate having first and second opposing surfaces;

    applying a plurality of overlapping opacifying layers onto the first and/or second surfaces of the polymer substrate, each of the opacifying layers being a layer of semi-opaque material disposed over substantially the whole area of the polymer substrate, each opacifying layer being applied in accordance with a different respective sub-image across at least a region of the substrate;

    whereby each of the plurality of overlapping opacifying layers has gaps in which the semi-opaque material of the layer is absent, the gaps of each layer being defined in accordance with a different respective sub-image, the sub-images in combination defining a multi-tonal image of a three-dimensional object which is exhibited by the plurality of overlapping opacifying layers in combination with one another, at least when the security print medium is viewed in transmitted light, wherein either all the sub-images are different negative image versions of the multi-tonal image or all the sub-images are different positive image versions of the multi-tonal image, whereby the number of opacifying layers overlapping one another at any one location varies across the substrate, the resulting variation in optical density of the plurality of overlapping opacifying layers in combination with one another giving rise to the multiple tones of the multi-tonal image, wherein the plurality of opacifying layers are applied such that gaps in each of them align to form at least one transparent window region, the at least one transparent window region substantially surrounding the multitonal image, and wherein:

    (i) at least some of the sub-images are multi-tonal, half-tone sub-images; and/or

    (ii) the method further comprises applying a mono-tone or multi-tone print of at least part of the multi-tonal image in one or multiple colours which contrast visually with the opacifying layers, the print of the multi-tonal image being in alignment with the sub-images in the opacifying layers, wherein the print is applied to the substrate before at least one of the opacifying layers is applied.

    Integers of the independent claims

    Claim 1

1. In his declaration at paragraph 167, Mr Power divides claim 1 into the following integers and provides comment/summary on each integer:

No.	Features of Amended Claim 1	Comment / Summary
1(a)	A security print medium for forming security documents therefrom, comprising a transparent or translucent polymer substrate having first and second opposing surfaces, and a plurality of overlapping opacifying layers disposed on the first and/or second surfaces of the polymer substrate, each of the opacifying layers being a layer of semi-opaque material disposed over substantially the whole area of the polymer substrate, wherein	Requires a plurality of overlapping opacifying layers.
1(b)	in at least a region of the substrate a multi-tonal image of a three-dimensional object is exhibited by the plurality of overlapping opacifying layers in combination with one another, at least when the security print medium is viewed in transmitted light	Different optical densities which appear as a variation in tone across an image can result in a three-dimensional effect, that is, an image of a three-dimensional object where portions appear to protrude towards and away: page 16, lines 31-33; page 29 lines 25-27. Multi-tone is described on page 5, first paragraph, as having a monochromatic "greyscale" appearance defined by relatively bright and relatively dark areas (and optionally one or more intermediate tones). In some embodiments colour is provided.
1(c)	each of the plurality of overlapping opacifying layers having gaps in which the semi-opaque material of the layer is absent, the gaps of each layer being defined in accordance with a different respective sub-image, the sub-images in combination defining the multi-tonal image, wherein	This feature is directed to how each of the sub-images in combination define the multitonal image.
1(d)	either all the sub-images are different negative image versions of the multi-tonal image or all the sub-images are different positive image versions of the multi-tonal image,	Negative images define elements of the multi-tonal image by the absence of opacifying material against surroundings of that material, rather than vice versa: see e.g. page 18 lines 21-23. Positive images define features of the image by the presence of opacifying material against empty surroundings: see e.g. page 20 lines 23-24.
1(e)	whereby the number of opacifying layers overlapping one another at any one location varies across the substrate, the resulting variation in optical density of the plurality of overlapping opacifying layers in combination with one another giving rise to the multiple tones of the multi-tonal image, and wherein:	This feature is directed to the tonal variation which results from the variation in the number of opacifying layers that overlap at any one point.
1(fA)(i)	(i) at least some of the sub-images are multi-tonal, half-tone sub-images, the security print medium further comprising	Feature 1(fA)(i) and (ii) of Amended Claim 1 are alternative features to feature 1(fB). "Half-tone" refers to the application of a lesser frequency or amplitude of dots of ink: see paragraph 57 above. Requiring at least some of the sub-images to be multi-tonal, half-tone images means that at least one of the opacifying layers must be a multi-tonal layer, where the multi-tones arise through the half-tone technique.
1(fA)(ii)	one or more additional opacifying layers each comprising a layer of semi-opaque material disposed over substantially the whole area of the polymer substrate, and each extending continuously across the region of the substrate containing the multi-tonal image; and/or	See comment above, this feature 1(fA)(ii) together with 1(fA)(i) is an alternative to feature 1(fB).
1(fB)	(ii) the security print medium further comprises a multi-tone print of at least part of the multi-tonal image in one or multiple colours which contrast visually with the opacifying layers, the multi-tone print comprising at least one multi-tone, half-tone print working, and the multi-tone print being located between at least one of the opacifying layers and the polymer substrate on the first or second surfaces thereof, the multi-tone print of the multitonal image being in alignment with the sub-images in the opacifying layers.	The multi-tonal image with a multi-tone print is coloured, comprises at least one multitone, half-tone print working, is located between at least one of the opacifying layers and the substrate, and is in alignment with the sub-images in the opacifying layers.

1. I will call the combination of integers 1(fA)(i) and 1(fA)(ii) as integer 1(fA).

2. The integers 1(fA) and 1(fB) are optional alternative features. That is, the scope of the claim 1 includes of either integer 1(fA) or 1(fB) (or both).

3. I have simplified the integers of claim 1 as follows:

   1(a) – A security document having transparent or translucent polymer substrate and a plurality (that is, two or more) opacifying layers.

   1(b) – The opacifying layers form an image of a three-dimensional object.

   1(c) – The opacifying layers have gaps; each gap containing a sub-image.

   1(d) – All the sub-images are positive images or all the sub-images are negative images.

   1(e) – The number of opacifying layers overlapping varies to make multiple tones/shades (optical density)

   1(fA)(i) – One layer of the multi-tonal sub-images is formed from half-tone printing

   1(fA)(ii) – One additional layer of semi-opaque material is disposed over substantially the whole area of the polymer substrate

   and/or

   1(fB) – A multi-tonal print in one or multiple colours which contrast visually with the opacifying layers, wherein the multi-tone print comprises a half-tone print layer located between at least one of the opacifying layers and the polymer substrate.

4. I have illustrated (in cross-sectional form) my understanding of the two alternatives options in claim 1.

   Option 1(fA)

5. Option 1(fA) defines two opacifying layers [integer 1(a)], an additional opacifying layer [integer 1(fA)(ii)], and a half-tone print layer [integer 1(fA)(i)]. This is four layers on the transparent substrate.

6. I have illustrated (as a cross-section) my understanding of the four-layer option 1(fA) below:

7. I note that option 1(fA) defines a minimum of three opacifying layers since it does not exclude the possibility that one of the opacifying layers defined earlier in the claim could also be a half‑tone printed layer. This can been seen from the words in integer 1(fA) “at least some of the sub-images are multi-tonal, half-tone sub-images” where the sub-images have previously been defined in integer 1(c) as being formed from the plurality of opacifying layers defined in integer 1(a). A requirement of the half-tone print layer being one of the three previously defined opacifying layers is that the halftone print layer must be “disposed over substantially the whole area of the polymer substrate” (as required by integer 1(a)); if the half-tone print layer is in addition to the three opacifying layers, then it does not need to be “disposed over substantially the whole area of the polymer substrate”.

8. I have illustrated (as a cross-section) my understanding of the three-layer option 1(fA) below:

9. The ordering of the layers is not defined, and thus each illustration is only one of the possible orderings.

   Option 1(fB)

10. I have illustrated (as a cross-section) my understanding of Option 1(fB) below:

11. The wording of option 1(fB) means that half-tone print layer must be distinct from the opacifying layers defined earlier in the claim. This can be seen from the words in 1(fB) “the security print medium further comprises a multi-tone print”. Thus, there are a minimum of three layers disposed on the transparent layer. I note that some ordering information of opacifying layers and print layers is defined in option 1(fB) - the print layer must be between one of the opacifying layer and the transparent substrate.

    Claim 8

12. In his declaration at paragraph 168, Mr Power divides claim 8 into the following integers:

No.	Features of Amended Claim 8	Comment/Summary
8(a)	A security print medium for forming security documents therefrom, comprising a transparent or translucent polymer substrate having first and second opposing surfaces, and a plurality of overlapping opacifying layers disposed on the first and/or second surfaces of the polymer substrate, each of the opacifying layers being a layer of semi-opaque material disposed over substantially the whole area of the polymer substrate, wherein	Same as feature 1(a) in Amended Claim 1.
8(b)	in at least a region of the substrate a multi-tonal image of a three-dimensional object is exhibited by the plurality of overlapping opacifying layers in combination with one another, at least when the security print medium is viewed in transmitted light,	Same as feature 1(b) in Amended Claim 1.
8(c)	each of the plurality of overlapping opacifying layers having gaps in which the semi-opaque material of the layer is absent, the gaps of each layer being defined in accordance with a different respective sub-image, the sub-images in combination defining the multi-tonal image, wherein	Same as feature 1(c) in Amended Claim 1.
8(d)	either all the sub-images are different negative image versions of the multi-tonal image or all the sub-images are different positive image versions of the multi-tonal image,	Same as feature 1(d) in Amended Claim 1.
8(e)	whereby the number of opacifying layers overlapping one another at any one location varies across the substrate, the resulting variation in optical density of the plurality of overlapping opacifying layers in combination with one another giving rise to the multiple tones of the multi-tonal image,	Same as feature 1(e) in Amended Claim 1.
8(f)	the security print medium further comprising at least one transparent window region formed by aligned gaps in each of the opacifying layers, the at least one transparent window region substantially surrounding the multi-tonal image, and wherein:	This feature is not in Amended Claim 1. Page 12, first paragraph, explains that this window feature, 8(f), increases the visibility of the security feature and adds an additional level of security.
8(gA)	(i) at least some of the sub-images are multitonal, half-tone sub-images; and/or	Same as feature 1(fA) in Amended Claim 1.
8(gB)	(ii) the security print medium further comprises a mono-tone or multi-tone print of at least part of the multi-tonal image in one or multiple colours which contrast visually with the opacifying layers, the multi-tone print comprising at least one multi-tone, half-tone print working, and the multi-tone print being located between at least one of the opacifying layers and the polymer substrate on the first or second surfaces thereof, the multi-tone print of the multi-tonal image being in alignment with the sub-images in the opacifying layers.	This feature is similar but not identical to feature 1(fB) of Amended Claim 1.

1. Claim 8 is similar to claim 1 but has notable differences. Firstly, feature 8(f) defines what could be described as a transparent ‘halo’ that surrounds the image within one of the gap/window regions. Secondly, integer 8(gA) is (contrary to the opinion of Mr Power) different to integer 1(fA) of claim 1. Integer 1(fA) of claim 1 included the feature of a “semi-opaque material disposed over substantially the whole area of the polymer substrate” whereas integer 8(gA) does not have that restriction. Thirdly, integer 8(gB) has an optional feature defined of “the security print medium further comprises a mono-tone or multi-tone print”.

   Option 8(gA)

2. Option 8(gA) defines two opacifying layers [integer 8(a)], and a half-tone print layer [integer 8(gA)].

3. I have illustrated (as a cross-section) my understanding of the three-layer option 1(gA) below:

4. Option 8(gA) defines a minimum of two opacifying layers since it does not exclude the possibility that one of the opacifying layers defined earlier in the claim could also be a half-tone printed layer. This can be seen from the wording of integer 8(gA) which states “at least some of the sub-images are multitonal, half-tone sub-images” where the sub-images are defined in integer 8(c). A requirement of the half-tone print layer being one of the two previously defined opacifying layers (i.e. two opacifying layer option) is that the halftone print layer must be “disposed over substantially the whole area of the polymer substrate” (as required by integer 8(a)); if the half-tone print layer is in addition to the two opacifying layers, then it does not need to be “disposed over substantially the whole area of the polymer substrate”.

5. I have illustrated (as a cross-section) my understanding of the two-layer option 8(gA):

   Option 8(gB)

6. Integer 8(gB) defines “the security print medium further comprises a mono-tone or multi-tone print”.

7. I have illustrated (as a cross-section) my understanding of the mono-tone option of 8(gB):

8. I have illustrated (as a cross-section) my understanding of the multi-tone option of 8(gB):

9. Option 8(gB) defines that the print layer is in addition to the opacifying layers defined earlier in the claim. This can be seen from the wording of integer 8(gB) “the security print medium further comprises a mono-tone or multi-tone print”. I note that some ordering information of opacifying layers and print layers is defined in option 8(gB) – the print layer must be between one of the opacifying layer and the transparent substrate.

   Claims 10 and 15

10. Mr Power states in his declaration at paragraph 169:

    “Amended Claim 10 is the third independent claim and is directed to a method of making a security print medium with all the features of Amended Claim 1. Amended Claim 15 is the fourth (and final) independent claim and is directed to a method of making a security print medium with all the features of Amended Claim 8.”

11. I agree that claims 10 and 15 are the method forms of claims 1 and 8.

    Dependent claims

12. At paragraph 170 Mr Power summarises the dependent claims as follows:

    “A summary of the dependent claims is as follows:

    (a)   Amended Claims 2 to 7 are dependent claims which depend from or through Amended Claim 1, and they are directed to details relating to one or more of the multi-tonal images, the opacifying layers and the sub-images. In particular, Amended Claim 3 is directed to all of the opacifying layers being substantially the same colour as one another.

    (b)   Amended Claim 9 is a dependent claim which depends from any of Amended Claims 1 to 8 and is directed to at least one graphics layer applied on the outermost opacifying layer(s) on the first and/or second surfaces of the polymer substrate.

    (c)   Amended Claims 11 to 14 are dependent method claims which depend from or through Amended Claim 10, and they are directed to details relating to one or more of the multi-tonal images, the opacifying layers and the sub-images.

    (d)   Amended Claim 16 is a method claim which depends from any of Amended Claims 10 to 15 and is directed to applying at least one graphics layer to the outermost opacifying layer(s) on the first and/or second surfaces of the polymer substrate.”

    Claim Construction and clarity – Legal principles

13. While the rules of construction for an Australian patent specification are well summarized in Decor Corp v Dart Industries [1988] FCA 399, the correct application of these rules to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70 at paragraphs 118-120:

    “... the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear ... while the claims define the monopoly claimed in the words of the patentee's choosing, the specification should be read as a whole ... it is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification ... terms in the claim which are unclear may be defined or clarified by reference to the body of the specification.”

14. Where it is impossible to ascertain the scope of invention the claims should be found to lack clarity (see Decor Corp v Dart Industries [1988] FCA 399; 13 IPR 385 at 400). A claim will lack clarity if a third party would be unable to ascertain whether an act would fall within the scope of the claim (Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59).

    Consideration

    Substantially surrounds

15. The Opponent submissions state at paragraph 119:

    Claim 8 requires that there be a window region that ‘substantially surrounds’ the multi-tonal image, but it is unclear how that is to be assessed because there is no technical result that follows from that limitation. For example, with the Nicaraguan 200 cordobas note (shown at paragraph 36(e) above), the window surrounds the head, but not the body of the man – can the image be just the head? Or is it the entire man? Or what about the Hong Kong 10 dollar note shown at paragraph 36(d) above, where the flower is partly within the window? And is an image ‘substantially surrounded’ by a window region if some part of it extends outside the window – and if so, how much, or in what proportion? There is no practical touchstone for this integer because it is entirely arbitrary as it is simply an element of graphic design.

16. The Applicant submissions state at paragraphs 120-122:

    “[The Applicant] does not agree that claim 8 is unclear on the basis of lack of clarity. It is apparent that Mr Power was able to ascertain whether or not there was a window region substantially surrounding an image (see eg Power #1 at [195], [197], [199], [201], [205], [220], [223], [237], [240, [245], [247], [249], [252], [255], [257], [259]). There is no evidence from Ms Jones which would suggest she perceives any ambiguity.

    The Applicant says that the meaning of the claim is clear: the transparent window has to go all the way around, or nearly all the way around, the three-dimensional image. In the examples given in OS [119], the image is not substantially surrounded. As to whether (for example) a head and body are separate images or the same image, if a practical and commonsense approach is adopted, there is no ambiguity.

    Contrary to OS [119], the feature is neither arbitrary nor an element of graphic design. As set out above, it is a security feature, since it draws attention to the multi-tonal three-dimensional image.”

17. I consider that a transparent region that surrounds an image is readily understood. Although there may be ‘edge cases’ where it is not immediately obvious, the mere existence of ‘edge cases’ does not mean that the feature lacks clarity. Decisions such as Catnic Components Limited v Hill and Smith Limited (1981) FSR 60 have found that where ‘edge cases’ exist, a purposive approach to understanding the prior art and to construing the claim can be taken to resolve the issue.

    Gaps

18. As a result of the amendment, the brackets around the letter s in the word gap(s) were removed (shown in strikethrough below):

    each of the plurality of overlapping opacifying layers having gap(s) in which the semi-opaque material of the layer is absent

19. Thus the claims, prior to amendment, defined that the opacifying layers had a gap or gaps; that is, a single gap or a plurality of gaps. As a result of the amendments, each of the opacifying layers must have a plurality of gaps.

20. It is important to note that a gap is not merely a region where semi-opaque material is absent. It is inherent to the words of the claims that the gap region must be defined by a border of semi‑opaque material. The necessity for a border is made clear with reference to the embodiment in figure 9.

21. Figure 9 is a multitonal image composed of a man’s head in the foreground and a building in the background:

22. The Applicant stated in the hearing that Figure 9 showed a plurality of gaps, however when pressed the Applicant was unable to identify where the gaps actually were. In my opinion, there is no distinct semi-opaque boundary that divides the area into more than one gap. For example, there is no distinct border that separates the man and the building and thus the man and the building are both contained within a single gap.

    Image of a three-dimensional object

1. The Opponent states in their submissions:

   “Page 6 of the Application describes this optional feature as follows:

   Since relatively bright locations typically give the impression of being closer to the viewer, the resulting multi-tone image can provide a strong three-dimensional effect, especially where the sub-images are arranged to achieve a gradual change in optical density across the image (on a scale when viewed by the naked eye).

   There is further discussion of this at pages 10-11 of the specification, where it says:

   [I]t is particularly advantageous if the multi-tonal image comprises an image of a three-dimensional object, preferably a geometrical solid or wireframe model, a person, an animal, a building or other architectural structure or a three-dimensional logo. Shadows in the image can be denoted by darker tones created by the multiple opacifying layers, and highlights by lighter tones.

   The above familiar assertion as to ‘advantage’ is not detailed.

   Any ‘advantage’ can only lie in having a distinctive feature on a banknote (although there is nothing in any of the claims that will necessarily result in the feature being distinctive). There is no assertion in the Application that including a three-dimensional figure per se is new, or inventive. Nor is there any assertion that incorporating a three-dimensional figure that uses different tones is inventive, or that a superior result is achieved by using opacifying layers to achieve tonal shifts.

   Specifying the nature of the image involves specifying an element of pure design. It is not a technical element. It is well known that in drawing an object, multiple tones can be used, together with elements of perspective, to create three-dimensional effects, and the ways of creating changes in tone were also well-known.

   By reason of the amended claims, what is apparently now asserted to be inventive is incorporating a three-dimensional object that has variations in tone that are achieved by at least two opacifying layers – thereby producing an image with at least one difference in tone. That must stand in contrast to using half-toning within a single opacifying layer, or incorporating different colours, to contribute a difference in tone that can similarly suggest a three-dimensional effect.

   To the extent that it is said that using a larger number of opacifying layers can achieve a larger number of tonal shifts, that is not relevant to assessing the advance because what is claimed includes the use of only two opacifying layers – it is the entire scope of what is claimed that must comprise any asserted inventive step.

   It is not said (or shown) that having a difference in tone arising from using two overlapping opacifying layers gives a more effective three-dimensional effect compared with using a single opacifying layer that incorporates area of half-toning, or using different colours to create a difference in tone.”

2. The Opponent’s submissions further state:

   “Figure 7 of the patent has an image that is readily recognised as conveying a three-dimensional effect, which is achieved by using a basic drawing technique using perspective:

   That is, it would recognisably be intended to be a three-dimensional object even without the shading.

   The image shown in Figure 8 is also recognisably intended to be a three-dimensional object because of its shape, and the variations in thickness that are suggestive of parts of the shape being closer or further away from the viewer. Again, this drawing involves elements of perspective:

   The Application also explains that a three-dimensional effect may be achieved by using shadowing (page 10 line 35 to page 11 line 2), which is another known element of design, or drawing.

   It is less clear how an image that has variations in tone only, without corresponding use of perspective or shadowing in the image itself, can constitute a three-dimensional object, yet the Application asserts that the image shown in region 9 of Figure 1(a) is a three-dimensional object because each section varies in tone:

   As seen above, the prior art examples also use multiple opacifying layers to create tonal differences that contain an equivalent effect. That includes:

   (a) the boundaries of the butterfly from the Mexican 50 pesos note;
   (b) the boundaries of the star shape from the Northern Bank 5 pound note;
   (c) the edge region of the Nicaraguan 10 cordobas note;
   (d) the boat and buildings in the Brunei 1 dollar note;
   (e) the shadow image, window regions and boundaries thereof in the Nicaraguan 20 cordobas note; and
   (f) the hourglass from the Latitude demonstration note.

   Yet the effect that De La Rue asserts is relevantly ‘three-dimensional’ is present in each of these examples, each of which uses multiple opacifying layers to create adjacent regions that vary in tonality.”

3. The Opponent states in their submissions:

   “Specifying the nature of the image involves specifying an element of pure design. It is not a technical element.”

4. The Applicant states in their submissions:

   “The provision of a multi-tonal image of a three-dimensional object formed by variation in the number of overlapping opacifying layers causing a variation in the optical density of the construction is core to the solution. The visual effect exhibited by the three dimensional object is made more complex or impactful (and hence achieves a higher security level) by select additional features.”

5. I consider that the type of image (image of a 3D object as opposed to an image that is not intended to represent a 3D object) can be considered a technical element of a claim since it would make the image more difficult to counterfeit (or equivalently, easier to identify a counterfeit).

6. I consider that an image that could plausibly be described as an image of a three-dimensional object falls within the scope of the phrase “image of a three-dimensional object”. Although there may be ‘edge cases’ as to whether an image is a representation of a two-dimensional or a three-dimensional object, as discussed above in relation to ‘substantially surrounds’, this can be resolved by a purposive approach to understanding the prior art and to construing the claim.

   Support

   Legal principles

7. Subsection 40(3) requires that the claim(s) must be supported by matter disclosed in the specification. In Merck Sharp & Dohme Corporation v Wyeth LLC (No 3) [2020] FCA 1477 (Merck), Burley J explored the requirement of support at [546]-[547]:

   “In CSR Building Products Ltd v United States Gypsum Company [2015] APO 72, Dr S D Barker adopted the summary provided by Aldous J in Schering Biotech at 252 – 253, which has been often followed in the United Kingdom:

   ...to decide whether the claims are supported by the description it is necessary to ascertain what is the invention which is specified in the claims and then compare that with the invention which has been described in the specification. Thereafter the court’s task is to decide whether the invention in the claims is supported by the description. I do not believe that the mere mention in the specification of features appearing in the claim will necessarily be a sufficient support. The word “support” means more than that and requires the description to be the base which can fairly entitle the patentee to a monopoly of the width claimed.

   That approach encapsulates broadly the claim support obligation under s 40(3). To it may be added the requirement that the technical contribution to the art must be ascertained. Where it is a product, it is that which must be supported in the sense that the technical contribution to the art disclosed by the specification must justify the breadth of the monopoly claimed”.

8. In CSR Building Products Limited v United States Gypsum Company [2015] APO 72 (CSR) that was referred to with approval in Merck, the delegate Dr Barker formulated the following test in order to determine whether a claim is supported by the description.

   •Construe the claims to determine the scope of the invention as claimed,

   •Construe the description to determine the technical contribution to the art, and

   •Decide whether the claims are supported by the technical contribution to the art.

   In Calix Limited v Grenof Pty Ltd [2023] FCA 378 at 128 Nicholas J commented on support issues which arises from as inconsistency between the claims and the description rather than the claims being too broad:

   “Although discussion of s 40(3) is often focused on the breath of the claim, there may be some claims which lack support not because they are too broad, but because they define an invention that is materially different to what is described in the body of the specification. Hence, a claim that includes a feature not disclosed in the specification, or omits a feature that is disclosed, may lack support because the invention claimed is materially different from the invention disclosed. Whether or not the claim will lack support in such circumstances will depend on the proper characterisation of the invention disclosed in the body of the specification and the invention claimed. See, for example, the invention described in the relevant priority document and the invention claimed in AstraZeneca at [254]-[255] which were characterised by the Full Court of the Federal Court as “fundamentally different” inventions. It is difficult to see how a claim to an invention that is fundamentally different from that which is disclosed in the specification could be “supported by matter disclosed” in accordance with s 40(3) of the Act.”

   Consideration

9. The Opponent states in their submissions:

   The applicant’s amended claims introduce a range of narrowing integers that describe combinations that are not described in the body of the specification.

   As mentioned above, none of Figures 1 to 8 involves opacifying layers with more than one gap. It seems unlikely that Figure 11 is directed to a ‘three-dimensional object’, as distinct from the ‘pattern’ that is referred to at page 29 line 17. None of the layers is described as being coloured, or multi-tonal. Figure 10 does not have an opacifying layer covering the entirety of the image, and the image is not described as being three-dimensional. Nor is there any description of those sub-images as comprising half-toning, and it is unclear how to go about counting the number of ‘gaps’ for each layer.

   There is no unambiguous disclosure in the specification of an embodiment which includes a combination of a multi-tonal image of a three-dimensional object, an additional opacifying layer that extends continuously across the region of the substrate containing the multi-tonal image, and each of the other requirements of claim 1.

   There is also nothing in the specification that addresses why the features in paragraphs (i) and (ii), for each of independent claims 1, 8, 10 and 15, are relevantly alternatives to each other as part of some coherent invention.

10. The Applicant states in their submissions:

    “It may be accepted that the law of support requires a correspondence between what is claimed and what is described (OS [105]-[107]). However, the Opponent has not pointed to any authority which suggests that to be supported, each of the features of the claim need to be disclosed in a single embodiment, and the Applicant is not aware of any such authority.

    As set out above at [12], the law of intermediate generalisation in Europe relates to added matter, not to the issue of support. However, even in that context (which has no relevance to this ground) there is no prohibition on claiming features which have appeared only in some embodiments, provided that it is clear from the description that those features have more general application and are not limited to their context.

    In the present case, the relevant features (all of which were included in the original claim set) are described in terms that make it clear that they are preferred (see Application page 5, line 1 to page 13, line 31), and therefore have broader application.”

11. The description contains reference to gaps in the description where the preferred features of the invention are given (i.e. not in a specific embodiment of the invention). For example, at page 5 line 24 to 27:

    “The multi-tone image is achieved by inserting one or more gaps in each of a plurality 25 of the opacifying layers (which otherwise cover substantially all of the polymer substrate, that is, preferably at least 50% of the substrate, more preferably at least 80% and most preferably all of the remaining substrate).”

12. And page 12 lines 10 to 13:

    “The or each opacifying layer may be laid down via an application technique which results in no additional visible sub-structure to the layer beyond that defined by the sub-image, i.e. the opacifying material being present in a macroscopically uniform, homogenous layer across all regions outside the gaps defined by the sub-image.”

13. None of the figures of the opposed application show a plurality of gaps. However, there is no requirement that an embodiment that falls within the scope of the claims must be shown in one of the figures. I consider that the description provides the disclosure of the plurality of gaps as a feature that is applicable to any of the embodiments. Consequently, I consider the description provides an adequate disclosure of, and support for, the feature of a plurality of gaps defined in the claims.

14. The feature of the “opacifying layers … disposed over substantially the whole area of the polymer substrate” defined in optional alternative feature 1(fA) is described in the description, for example at page 6 lines 6 to 10:

    “There may be one or more additional opacifying layers present which do not contribute to the multi-tone image, e.g. being entirely absent across the relevant region of the substrate or being provided uniformly across the region of the substrate.”

15. I consider that the description provides the disclosure of an opacifying layer disposed over substantially the whole area of the polymer substrate as a feature that is applicable to any of the embodiments. Although the feature of an opacifying layer disposed over substantially the whole area of the polymer substrate is not a feature in any of the embodiments, I consider the description is sufficient to enable a person skilled in the art to produce a security document in any of the embodiments to include this feature. Consequently, I consider the description provides an adequate disclosure of, and support for, the feature of an opacifying layer disposed over substantially the whole area of the polymer substrate defined in the claims. Because many of the embodiments of the disclosed invention are multi-tonal images of three-dimensional objects, it follows that the feature of an opacifying layer disposed over substantially the whole area of the polymer substrate is applicable to those embodiments and thus this feature is supported by the specification.

16. Turning to the Opponent’s submission:

    “There is also nothing in the specification that addresses why the features in paragraphs (i) and (ii), for each of independent claims 1, 8, 10 and 15, are relevantly alternatives to each other as part of some coherent invention.”

17. The independent claims define multiple alternatives inventions. The alternative inventions within each independent claim share most (but not all) features. It is unclear how the Opponent’s submissions relate to the heading of ‘support’ under which these submissions sit. It is possible that the submissions were intended to fall under the heading of clarity or succinctness. I will deal briefly with this ‘catch-all’ complaint.

18. Although the alternatives in the independent claims make the claims somewhat awkward, each of the alternatives adequately define an invention as required by s 40(2)(b). I do not consider that the awkwardness of the claims is of such inconvenience as to be considered lacking succinctness or clarity. Furthermore, I do not consider that the mere presence of alternatives in the independent claims introduces a lack of support.

    Novelty

    Legal principles

19. 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, or the information was contained in a specification published after the priority date of the claim under consideration and, if that information is, or were to be, the subject of a claim of the specification, that claim has, or would have, a priority date earlier than that of the claim under consideration (referred to as “whole of contents” novelty).

20. It is well established that the general test for lack of novelty 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; 137 CLR 228 at 235 [20]:

    “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”.

    Consideration

    D14 – NI50- Nicaragua 50 Cordobas banknote

21. Ms Jones states in her second declaration at paragraph 140-144:

    “I understand that the Nicaragua 50 Cordobas banknote (NI50) (exhibited as Exhibit DSB-15 in the Bolderston Declaration) that I viewed was publicly available in around 2009 and certainly before 2015. The NI50 is formed on a polymer substrate and has at least two white opacifying layers on either side of the substrate.

    A first window region in the shape of two flowers is provided on the NI50, as shown in Figures 45 and 46 below. Also adjacent the flower windows is a flower shadow image, as shown in Figure 47 below. The larger window has a pink G-Switch ink printed over it. Each flower window in this region and the flower shadow image is multi-tonal from being printed in halftone on a single opacifying layer. Around each window and the shadow image the outer shape of each flower is multi-tonal through stepping back of the opacification layers. Over the flower windows region and opacification layers surrounding the windows on the front side of the NI50 there is a gold metallic ink.

    On the NI50, it appears that the opacifying layer forming the multi-tonal flower-shaped windows and flower shadow image is applied first to the front side of the note. Then next on the front side the G-Switch ink is applied over the larger flower shape window to give a pink colour that contrasts with the white opacifying layers and is in alignment with white opacifying layers of the larger flower shaped window. Then, over this, the next opacifying layer is applied stepped back around each flower window and the flower shaped shadow image. Then, over that, on the front side the next opacifying layer is stepped back further around each flower shaped window, but runs completely across the shadow image.

    On the back two opacifying layers are applied that are stepped back around each of the flower-shaped windows, to further provide a shaped multi-tonal edge effect to those windows. It is not clear if an opacifying layer on the back is stepped back around the shadow image, but either the first opacifying layer on the back is stepped back and the other runs across the shadow image or both of the opacifying layers on the back run across the flower shaped shadow image.

    I consider that all of the features of claim 1 are present in the NI50.”

22. Mr Power states at paragraph 112:

    “The D14 Security Feature comprises an image of a multi-tonal flower. The multi-tonal leaves of the flower are formed from a single opacifying layer. The pink G-Switch in the flower is applied as a solid single tone colour. There are also gold metallic ink flourishes on the front of the note.”

23. Mr Power states at paragraph 231:

    “In D14, the security device with the pink flower coloured with G-Switch, and associated window, is a different type of approach to a security feature of any of the Amended Claims, where sub-images in different opacifying layers in combination define a multitonal image. Accordingly, at least the following key features of independent Amended Claims 1, 8, 10 and 15 are not disclosed in D14:

    (a) there is no multi-tonal image of a three-dimensional object formed by a plurality of overlapping opacifying layers giving rise to a variation in optical density, as required by feature 1(b),(e) and 8(b),(e) (and the corresponding features in independent Amended Claims 10 and 15). In D14, the shading in the pink flower is relatively crude, and has been formed from half-toning in a single opacifying layer.;

    (b) there is no plurality of overlapping opacifying layers having gaps defining different respective sub-images, the sub-images in combination defining a multi-tonal image, as required by features 1(c) and 8(c) (and the corresponding features in independent Amended Claims 10 and 15). Sub-images in different overlapping opacifying layers do not define a multi-tonal image in D14. The edges around the flower and the full window, which are stepped back opacifying layers, are not subimages which define a multi-tonal image within the meaning of this claim feature;

    (c) it follows that I consider the characteristics of the sub-images which give rise to a multi-tonal image as set out in feature 1(e), 1(fA)(i), feature 8(e) and feature 8(gA) (and the corresponding features in independent Amended Claims 10 and 15) are not disclosed in D14. However, for the avoidance of doubt:

    i. in relation to alternative (i) of Amended Claim 1, there is no additional opacifying layer(s) extending continuously across the region of the substrate containing the multi-tonal image, as required by feature 1(fA)(ii) (and the corresponding feature in independent Amended Claim 10). This feature is not present in the security image in D14, because D14 has a window; and

    ii. in relation to alternative (ii) of Amended Claim 1, there is no multi-tone print of at least part of the multi-tonal image in one or multiple colours located between at least one of the opacifying layers and the polymer substrate, the multi-tone print of the multi-tonal image being in alignment with the subimages in the opacifying layers, as required by feature 1(fB) (and the corresponding feature in independent Amended Claim 10). In D14, the pink G-Switch ink is mono-tonal.”

1. The difference of opinion between Ms Jones and Mr Power appears to be in whether the stepped‑back region surrounding the flowers can be considered a sub-image. I consider that the stepped‑back region is not a sub-image as defined in the claims since the stepped-back region is not contained within gaps.

2. Both Ms Jones and Mr Power consider that the three-dimensional image of the pink flower is formed from a single opacifying layer (of G-switch ink) and the white flower is formed from a single opacifying layer of white ink. The gold ink overlaps the flowers in some areas.

3. I have found claim 1 and claim 8 option 8(gB) defines at least three layers overlapping to form areas of different opacity to form a three-dimensional image. I am not satisfied that the three-dimensional image in D14 is formed with three layers. Claim 1 is novel in light of D14. Claim 10 (the method of making the device of claim 1) is also novel.

4. I have found claim 8 option 8(gA) defines three layers or two layers when the half-tone print layer “disposed over substantially the whole area of the polymer substrate”. Although D14 does disclose two layers (the gold-coloured vine covering the flowers), the half-tone print layer is not “disposed over substantially the whole area of the polymer substrate”.

5. Furthermore, claim 8 defines a transparent region substantially surrounding the three-dimensional image which is not disclosed in D14. Claim 8 and claim 15 are novel in light of D14.

   D2 – Mexican 50 pesos note

6. The Opponent states in their submissions:

   “The broader aspects of the butterfly images on the Mexican 50 pesos note involve the use of multiple opacifying layers to create variations in tone, the use of colour, half and full windows, and areas of half-toning.

   The following inset butterfly has a series of step backs that contribute to the effect around that butterfly image, an effect that De La Rue would characterise as being three-dimensional (since it says that Figure 1 of the Application is three-dimensional).

   It also incorporates coloured elements, which include half-tone printing (see the large ‘5’), but it does not use opacifying layers that have multiple gaps in them (in respect of the sub-images that make this particular image).

   Other parts of the 50 pesos note feature different elements of what has been claimed. The adjacent butterflies use multiple opacifying layers, having multiple gaps, and use half-toning as well as coloured components. In relation to paragraph (i), there is, however, no opacifying layer that extends continuously across the image, but in relation to paragraph (ii) there is an orange print, that includes halftone sections and which is overlapped by opacifying layers.

   The designer of the 50 pesos note has used all of the elements described in the claims of the Application, including to create areas of contrasting tones. To the extent that these images vary from what has been claimed, those variations involve mere design choices. They do not involve any inventive insight, or improvement, or the overcoming of any obstacle.”

7. Ms Jones states at paragraph 84:

   “To summarise, the large window area of the MX50 has a multi-tonal white opacifying layer applied in half-tone to the back surface which provides multi-tonal features in the window regions. This same opacifying layer is applied continuously to cover most of the substrate surface other than in window regions. An orange coloured layer is applied on the back over that white multi-tonal opacifying layer and creates orange features which are multi-tonal within and around the large window region in alignment with the overall image created. The orange layer contrasts visually with the white opacifying layers. The orange layer also provides the butterfly image that extends from within to below the lower butterfly shaped window region, as shown in Figures 9 to 12 below. Two white opacifying layers are applied onto the rear side of the MX50 after and over the orange layer and stepped back from the window regions to create multi-tonal edges on the windows. Similarly, two white opacifying layers are provided on the front of the MX50 which are stepped back around the window regions and which contribute to the multi-tonal edges to the shaped window regions. Together these layers create a multi-tonal image in a large and complex window region involving individual multi-tonal opacifying layers, overlapping opacifying layers that have differently sized gaps around the window and an orange coloured layer.”

8. Mr Power states at paragraph 192 and 193:

   “The D2-A Security Feature comprises three separate images, being a top butterfly, bottom butterfly and orange butterfly wings. The multi-tonal features of these images are located in a single opacifying layer (appearing in the top and bottom butterflies only) and an additional single layer of orange gravure ink (appearing in all three images). None of these images result from a plurality of sub-images in different opacifying layers.

   The approach in the D2-A Security Feature is a different type of approach to a security feature of any of the Amended Claims, where sub-images in different opacifying layers 64 in combination define a multi-tonal image. Accordingly, at least the following key features of independent Amended Claims 1, 8, 10 and 15 are not disclosed:

   (a) there is no multi-tonal image of a three-dimensional object formed by a plurality of overlapping opacifying layers giving rise to a variation in optical density, as required by features 1(b),(e) and 8(b),(e) (and the corresponding features in independent Amended Claims 10 and 15);

   (b) there is no plurality of overlapping opacifying layers having gaps defining different respective sub-images, the sub-images in combination defining a multi-tonal image, as required by features 1(c) and 8(c) (and the corresponding features in independent Amended Claims 10 and 15). In particular, the stepped border at the edges of each of the top and bottom butterfly images does not comprise "subimages" which in combination define a multi-tonal image within the meaning of this claim feature. Further, for each of the top and bottom butterfly images there is only one opacifying layer having multiple gaps, being the multi-tonal opacifying layer which adds details to the butterfly wings – the remaining opacifying layers having only one gap, being the window forming each butterfly wing; and the third image of the orange butterfly wings is not formed using the opacifying layers.”

9. Ms Jones discusses the two white opacifying layers on the front and two white opacifying layers on the rear side. However, this is only in relation to the ‘stepped-back’ region that surrounds the three-dimensional images of the butterflies.

10. Ms Jones and Mr Power both state that the butterflies are formed from white and orange layers which overlap in some areas.

11. I have found claim 1 and claim 8 option 8(gB) defines at least three layers overlapping to form areas of different opacity to form a three-dimensional image. I am not satisfied that the three‑dimensional image (of butterflies) in D2 is formed from at least three layers. Claim 1 is novel in light of D2. Claim 10 (the method of making the device of claim 1) is also novel.

12. I have found claim 8 option 8(gA) defines three layers or two layers when the half-tone print layer “disposed over substantially the whole area of the polymer substrate”. Although D14 does disclose two layers (the overlapping butterflies), the half-tone print layer is not “disposed over substantially the whole area of the polymer substrate”. Furthermore, claim 8 (both options) defines a transparent region substantially surrounding the three-dimensional image which is not disclosed in D2. Claim 8 is novel in light of D2. Claim 15 (the method of making the device of claim 8) is also novel in light of D2.

    D4 – Latitude bank note

    Was the Latitude banknote and associated presentation at the international conference a public disclosure?

13. The Applicant’s submissions cast doubt as to whether the Latitude banknote and the presentation relating to the Latitude banknote can be considered a public disclosure before the priority date.

14. The Opponent’s submissions states at paragraph 83:

    “The Latitude banknote is a note that CCL demonstrated, and passed around, as part of its promotion of its business before the priority date, including at an international conference in 2012. There appears to be some generalised assertion by Mr Power at paragraph 47 of his declaration that any presentation at a conference is confidential, however:

    (a)   Mr Power does not suggest that he was at the relevant presentation by Ms Jones;

    (b) Ms Jones was, of course, present, and says that she was not presenting information on a confidential basis. And there are no confidentiality statements on the slides that she presented;

    (c) it would not make sense for CCL to present confidential information at a conference, at which its competitors would be present;”

15. Ms Jones states in her first declaration at paragraphs 16-18:

    “As at the Priority Date, there were a number of sources of information for those working in this field. This included, for example, industry conferences involving presentations of new banknotes, security features and associated products. For example, I attended and presented at the International Bank Note Designers (IBDA) Conference in Stockholm, Sweden, in September 2012 and Montreal, Canada, in September 2014. I was a member of IBDA at the time of the 2012 and 2014 conferences and I still am a member.

    The IBDA conferences in 2012 and 2014 ran over a few days and involved presentations and workshops at which facilitators would discuss and demonstrate how to implement new security and design features. The workshops would involve teaching designers in attendance about new features and how they were used in their banknote designs. It was common for attendees or those giving the workshops to provide examples of their house notes which included new security design features.

    In both 2012 and 2014 I gave a presentation and provided workshops with Lachlan McDonald of PolyTeQ Services (PolyTeQ) in which we showed other designers the layered structure of a banknote with outer opacifying layers and a polypropylene middle. I discussed how polymer substrates provided more design freedom than paper and how you could use the clear layer and reverse out the opacifying layers on the front and back to create windows and features. I also discussed the design integration of security features which were offered on CCL Secure polymer substrates, such as an optically variable ink in the window that would be seen front and back or would run under the white layers outside the window to create two different visible effects. A copy of my 2012 and 2014 presentations are attached at Annexure ALJ-3 and Annexure ALJ-4 respectively.”

16. The Applicant’s submissions state at paragraph 69:

    “Further, since the Opponent has not been permitted to plead the presentation: it relies on the note itself.”

17. The presentation from Ms Jones Evidence in Support (annexure ALJ-3) has some slides in common with the presentation in the exhibits of the Lachlan McDonald declaration. The exhibits of the Lachlan McDonald declaration are not being relied upon under regulation 5.23. However, this does not mean that the duplication somehow nullifies the pre-existing evidence in support.

18. On the basis of Ms Jones’ evidence I am satisfied that the Latitude bank note and slide presentation were presented at an international conference in 2012, and these were shown without the expectation of confidentiality. Consequently, the Latitude bank note and the presentation are prior art for the consideration of novelty and inventive step.

    Latitude banknote disclosure

19. Ms Jones states in her second declaration (with my emphasis in underline):

    “The LGN has a core polymer substrate on which two opacifying layers are printed on the front side and two are printed on the back side. A blue print layer is provided in between the opacifying layers on the back side of the LGN and between at least one of the white opacifying layers and the polymer substrate. The LGN is not a finished banknote as it does not have any offset printing, or other security printing, applied over the top, but still fulfills the role of a security print medium mentioned in claim 1. The LGN has a multi-tonal image of an hourglass that is formed in white opacifying layers that have gaps of varying sizes and that overlap more in some regions and less in other regions around the hourglass image. At least one of the white opacifying layers that form the hourglass are applied in half tone in areas to give a multi-tonal single layer, for example giving multi-tonal highlights in the hourglass. Overlapping, and in alignment with the hourglass multi-tonal image provided by the white opacifying layers, is a multi-tonal blue image of sand and a man within the hourglass. One opacifying layer in particular overlaps the sand and man multi-tonal image with white and multi-tonal white lines and curved shapes that depict light reflecting from the hourglass. Figures 31 and 32 show the printed LGN.

    The white opacifying layers and the blue colour layer cover a majority of the polymer substrate. The multi-tonal image of the hourglass provided by the combination of white opacifying layers and blue colour layer are clearly visible both in reflection and in transmission. The blue colour layer contrasts visually with the white opacifying layers.

    I consider that all of the features of claim 1 are present in the LGN.”

20. Mr Power states at paragraph 201:

    “The multi-tonal details of the D4 Security Feature (i.e. the white highlights of the hourglass) are located in a single opacifying layer. The approach in the D4 Security Feature is a different type of approach to a security feature of any of the Amended Claims, where sub-images in different opacifying layers in combination define a multitonal image. Accordingly, at least the following key features of independent Amended Claims 1, 8, 10 and 15 are not disclosed:

    (a) in relation to alternative (i) of Amended Claim 1, there is no additional opacifying layer(s) extending continuously across the region of the substrate containing the multi-tonal image, as required by feature 1(fA)(ii) (and the corresponding feature in independent Amended Claim 10);

    (b) in relation to alternative (ii) of Amended Claims 1 and 8, there is no additional print (either multi-tone or mono-tone) in a colour which contrasts visually to the colour of the opacifying layers, as required by features 1(fB) and 8(gB) (and the corresponding features in independent Amended Claims 10 and 15); and

    (c) the window region of the D4 Security Feature forms part of hourglass image and does not "substantially surround" that image, as required by feature 8(f) (and the corresponding feature in independent Amended Claim 15).”

21. One slide from the presentation at the 2012 international conference Ms Jones presented (from exhibit ALJ-3) is shown here:

22. The Latitude banknote has the three-dimensional image (the composite image of a man falling in an hourglass) formed from two layers. There is a blue layer which forms the man and the sand, and a beige layer forming the reflections on the hourglass.

23. I have found claim 1 and claim 8 option 8(gB) defines at least three layers overlapping to form areas of different opacity to form a three-dimensional image. I do not consider that the three-dimensional image (of the man falling inside the hourglass) in D4 is formed from three layers. Claim 1 is novel in light of D4. Claim 10 (the method of making the device of claim 1) is also novel.

24. I have found claim 8 option 8(gA) defines three layers or two layers when the half-tone print layer “disposed over substantially the whole area of the polymer substrate”. I consider that the blue layer is a half-tone print layer “disposed over substantially the whole area of the polymer substrate”. I consider the reflection of the hourglass and the sand to be overlapping and forming a three-dimensional image so this feature is disclosed in D4. However, claim 8 (both options) define a transparent region substantially surrounding the three-dimensional image which is not disclosed in D4. Furthermore, D4 does not disclose the sub-images in a plurality of gaps, since the image of the hourglass and the falling man are all formed within a single gap. Claim 8 is novel in light of D4. Claim 15 (the method of making the device of claim 8) is also novel in light of D4.

    D21 – Brunei 1 dollar note

25. The Opponent states in their submissions:

    “The Brunei 1 dollar note uses variations in toning to create three-dimensional effects, which can be seen in the edging, and other details of the image shown below. The differences in tone involve both half-toning, as well as overlapping opacifying layers. For example, in the bottom image the surrounding opacifying layer extends in [sic] across the roof of the building and the prow of the boat to change the tonality of those components.

    Again, the variations in the claims are to differences in design only, and not to differences in any technical effect.

    ”

26. Ms Jones states in her declaration at paragraph 155:

    “On the front side of the BN1 a first opacifying layer is applied in halftone to form the tonal elements in the window region and tonal elements in each shadow image outside the window region. There are two opacifying layers applied over that layer on the front and stepped back around the window region, the first layer of those two layers also stepping back around the shadow images and the second of those opacifying layers being applied to cover the shadow images on the front surface. On the back of the BN1 a blue G-Switch ink is applied across the window region and colouring some of the elements in the window region with a contrasting blue colour. The G-Switch ink is also applied to create the blue spiral pattern work on the right side of the back of the document. Over the G-Switch ink on the back of the BN1 there are two opacifying layers applied over that G-Switch ink that are each stepped back around the window region, the first layer of those two layers also stepping back around the shadow images and the second of those opacifying layers being applied to cover the shadow images. The overlapping opacifying layers having differing sized gaps create a multi-tonal effect where they overlap with the tone dependent on the number of layers overlapping and/or the halftone effect of the first opacifying layer on the front side.”

27. Mr Power states at paragraph 242:

    “In D21, the security device has a temple, boat and associated window. The shadow image of the boat is formed in the same single opacifying layer as that of the temple. At least the following key features of independent Amended Claims 1, 8, 10 and 15 are not disclosed in D21:

    (a) there is no multi-tonal image of a three-dimensional object formed by a plurality of overlapping opacifying layers giving rise to a variation in optical density, as required by feature 1(b),(e) and 8(b),(e) (and the corresponding features in independent Amended Claims 10 and 15);

    (b) there is no plurality of overlapping opacifying layers having gaps defining different respective sub-images, the sub-images in combination defining a multi-tonal image, as required by features 1(c) and 8(c) (and the corresponding features in independent Amended Claims 10 and 15). The images of the boat and the temple are single images in their own right, not sub-images which define a multi-tonal image within the meaning of this claim feature;

    (c) it follows that I consider the characteristics of the sub-images which give rise to a multi-tonal image as set out in feature 1(e), 1(fA)(i) feature 8(e) and feature 8(gA) (and the corresponding features in independent Amended Claims 10 and 15) are not disclosed in D21. However, for the avoidance of doubt:

    i. in relation to alternative (i) of Amended Claim 1, there is no additional opacifying layer(s) extending continuously across the region of the substrate containing the multi-tonal image, as required by feature 1(fA)(ii) (and the corresponding feature in independent Amended Claim 10). This feature is not present in the security image in D21, because D21 has a window; and

    ii. in relation to alternative (ii) of Amended Claim 1, there is no multi-tone print of at least part of the multi-tonal image in one or multiple colours located between at least one of the opacifying layers and the polymer substrate, the multi-tone print of the multi-tonal image being in alignment with the subimages in the opacifying layers, as required by feature 1(fB) (and the corresponding feature in independent Amended Claim 10). In D21, the blue G-Switch ink is mono-tonal.”

1. I consider that the image of the boat and the building are formed from a two white printed half‑tone layers. The blue G-switch layer partially overlays the boat and building. The blue G-switch layer does not form areas of different opacity to form a three-dimensional image; the blue G-switch layer merely provide a blue shade to a region that is partially covering (but independent of) the three-dimensional image.

2. I have found claim 1 and claim 8 option 8(gB) define at least three layers to form areas of different opacity to form a three-dimensional image. I am not satisfied that the three-dimensional image (of the boat and building) in D21 is formed from at least three layers. Claim 1 is novel in light of D21. Claim 10 (the method of making the device of claim 1) is also novel.

3. I have found claim 8 option 8(gA) defines three layers or two layers when the half-tone print layer is “disposed over substantially the whole area of the polymer substrate”. Although D21 discloses two layers (the boat and building layers), it is not clear that the half-tone layer is “disposed over substantially the whole area of the polymer substrate”. Furthermore, claim 8 (both options) define a transparent region substantially surrounding the three-dimensional image which is not disclosed in D21. All claims require sub-images formed in two gaps which is also not disclosed in D21. Claim 8 and claim 15 are novel in light of D21.

   D12 – Nicaraguan 10 cordobas note

4. The Opponent states in their submissions:

   “This is a further prior art example that has a three-dimensional image (the three-dimensional effect achieved from the drawing itself, which is worked into an opacifying layer), and it also features variations in tone from overlapping opacifying layers in the edge sections. The multi-tonal image is provided within a window region as well as passing under opacifying layers to form a shadow image that extends from the bottom of the window.

   Again, the design variations required by the claims do not contribute any inventive step. Here, instead of an opacifying layer across the entire image, there is a layer of G-switch ink that is applied across the entire window region and around its multi-tonal border.

   ”

5. Mr Power states at paragraph 226:

   “The approach in D12 is a different type of approach to a security feature of any of the Amended Claims, where sub-images in different opacifying layers in combination define a multi-tonal image. Accordingly, at least the following key features of independent Amended Claims 1, 8, 10 and 15 are not disclosed in D12:

   (a) there is no multi-tonal image of a three-dimensional object formed by a plurality of overlapping opacifying layers giving rise to a variation in optical density, as required by feature 1(b),(e) and 8(b),(e) (and the corresponding features in independent Amended Claims 10 and 15);

   (b) there is no plurality of overlapping opacifying layers having gaps defining different respective sub-images, the sub-images in combination defining a multi-tonal image, as required by features 1(c) and 8(c) (and the corresponding features in independent Amended Claims 10 and 15). Sub-images in different overlapping opacifying layers do not define a multi-tonal image, and furthermore gaps in each opacifying layer are not defined in accordance with different respective subimages. The stepped-back border around the castle, which is formed from different opacifying layers, are not sub-images which in combination define a multi-tonal image within the meaning of this Amended Claim feature;

   (c) it follows that I consider the characteristics of the sub-images which give rise to a multi-tonal image as set out in feature 1(e), 1(fA)(i) feature 8(e) and feature 8(gA) (and the corresponding features in independent Amended Claims 10 and 15) are not disclosed in D12. However, for the avoidance of doubt,

   i. in relation to alternative (i) of Amended Claim 1 (i) of Amended Claim 1, there is no additional opacifying layer(s) extending continuously across the region of the substrate containing the multi-tonal image, as required by feature 1(fA)(ii) (and the corresponding feature in independent Amended Claim 10); and

   ii. in relation to alternative (ii) of Amended Claim 1, there is no multi-tone print of at least part of the multi-tonal image in one or multiple colours located between at least one of the opacifying layers and the polymer substrate, the multi-tone print of the multi-tonal image being in alignment with the subimages in the opacifying layers, as required by feature 1(fB) (and the corresponding feature in independent Amended Claim 10). In D12, the green G-Switch ink is mono-tone, not a multi-tone print, and it is not in alignment with images in the opacifying layers.”

6. The three dimensional image of D12 is not formed from three layers and does not disclose two gaps, so claim 1 is novel in light of D12. Claim 10 (the method of making the device of claim 1) is also novel.

7. D12 also does not disclose the transparent region substantially surrounding the three-dimensional image. Claim 8 is novel in light of D12. Claim 15 (the method of making the device of claim 8) is also novel.

   D13 – Nicaraguan 20 cordobas note

8. The Opponent states in their submissions:

   “The Nicaraguan 20 cordobas note has multiple opacifying layers, and includes areas of multi-tonality in the stick, and the surrounding areas are stepped back to create variations in tone in those regions also. This note includes full window, half window and shadow image aspects formed by gaps in different opacifying layers. At least when viewed in transmission the gaps in different opacifying layers combine to create a plurality of tonal variations.

   There is also a tonal stepping back effect around the girl, window region of stick and the shadow image. An opacifying layer is applied continuously across the regions of the image comprising the girl and the shadow image. The girl is printed using half-tone regions in coloured ink, as described in paragraph (ii) of claim 1.

   ”

9. Ms Jones states in Jones 2 at paragraphs 136-137:

   “A window which includes a multi-tonal stick and a separate window below the stick in the shape of a pot is created in one opacifying layer, as shown in Figures 5 and 6 above. In addition, the same opacifying layer is reversed out to create a shadow image of a person holding another stick above the pot. The stick and shadow image of person holding a stick are both multi-tonal. A multi-tonal image of a girl is printed in a pink G-Switch ink and also within the pot shaped window the G-Switch ink creates a multi-tonal impression in the pot shaped window. The pink G-Switch ink is applied in a way to align with the shaped windows and shadow image provided by the opacification layers.

   The pink G-Switch ink is applied first onto the polymer substrate on the back of the NI20, the pink G-Switch being applied multi-tonally. Over that, a white opacifying layer is applied on the back with gaps creating the stick and pot window and person holding a stick shadow image, that opacifying layer being applied multi-tonally itself, or in other words providing a multi-tonal sub-image. Over that layer on the back of the NI20, an opacifying layer is applied stepped back around the stick, pot and person holding a stick images of the previous layer. Then over that on the back a further opacifying layer is applied that is stepped back around the stick and the pot windows, but which covers the shadow image of the person holding a stick.”

10. Mr Power states in his declaration at paragraph 228-229:

    “In D13, the shadow images in the opacifying layers are not formed from a plurality of sub-images in different opacifying layers. The shadow images in D13 are each formed from a single opacifying layer.

    The approach in D13 is a different type of approach to a security feature of any of the Amended Claims, where sub-images in different opacifying layers in combination define a multi-tonal image. Accordingly, at least the following key features of independent Amended Claims 1, 8, 10 and 15 are not disclosed in D13:

    (a) in relation to alternative (i) of Amended Claim 1 (i) of Amended Claim 1, there is no additional opacifying layer(s) extending continuously across the region of the substrate containing the multi-tonal image, as required by feature 1(fA)(ii) (and the corresponding feature in independent Amended Claim 10); and

    (b) there is no multi-tonal image of a three-dimensional object formed by a plurality of overlapping opacifying layers giving rise to a variation in optical density, as required by feature 1(b),(e) and 8(b),(e) (and the corresponding features in independent Amended Claims 10 and 15);

    (c) there is no plurality of overlapping opacifying layers having gaps defining different respective sub-images, the sub-images in combination defining a multi-tonal image, as required by features 1(c) and 8(c) (and the corresponding features in independent Amended Claims 10 and 15). Sub-images in different overlapping opacifying layers do not define a multi-tonal image in D13, and furthermore gaps in each opacifying layer are not defined in accordance with different respective sub-images in D13;

    (d) it follows that I consider the characteristics of the sub-images which give rise to a multi-tonal image as set out in feature 1(e), 1(fA)(i) feature 8(e) and feature 8(gA) (and the corresponding features in independent Amended Claims 10 and 15) are not disclosed in D13.”

11. The three-dimensional images (the stick, the pot, and the girl) appear to each be a single half-tone layer printed on a white layer. The three-dimensional image of D13 is not formed from three layers, so claim 1 is novel in light of D13. Claim 10 (the method of making the device of claim 1) is also novel.

12. Although D13 does disclose two layers, the half-tone layer is not “disposed over substantially the whole area of the polymer substrate” so does not meet the requirements of claim 8 option 8(gA) two-layer. D13 also does not disclose the transparent region substantially surrounding the three-dimensional image. Claim 8 is novel in light of D13. Claim 15 (the method of making the device of claim 8) is also novel.

    D15 – Nicaraguan 200 cordobas note

13. The Opponent states in their submissions:

    “The toning of the face and of the hat have a three-dimensional effect, and the opacifying layers around the hat are stepped back. There is also a half-toning regions in parts of the man’s face, and in his hat. There is also a coloured element with half-toning in the hat, and they overlap with the edge opacifying layer to an extent, as shown in the magnified image below. An opacifying layer extends across the region that includes the man’s body and hand.

    Again, to the extent that there are any differences in what has been claimed, those differences involve design variations only and do not address any technical issue or give rise to any advance.

    ”

14. The three-dimensional image of D15 is not formed from three layers and does not disclose two gaps, so claim 1 is novel in light of D15. Claim 10 (the method of making the device of claim 1) is also novel.

15. D15 also does not disclose the transparent region substantially surrounding the three-dimensional image. Claim 8 is novel in light of D15. Claim 15 (the method of making the device of claim 8) is also novel.

    D29 – NB – The Northern Bank five pound note

16. The Opponent states in their submissions:

    “This prior art example is a clear example of the use of multiple tones to achieve an image with some three-dimensional effect, using multiple opacifying layers which overlap one another by varying amounts and in varying number, in the sense described in the Application.

    The balance of the features described in each of the claims involves design variations around such an idea.

17. Ms Jones states at paragraph 158:

    “The NB5 has two window regions that are star shaped, as shown in Figures 57 to 61 below. Each of these windows has surrounding it larger star regions created by the absence of opacifying layers beneath a top opacification layer on either side of the substrate and forming a multi-tonal star shaped shadow image surrounding each of the windows. This is the case for both the large star window and the small star window. At least for the small star window there is also a circular gap in the top opacifying layer on each of the front and back. Viewed in transmission the edges of the points of the star shapes formed from the overlapping opacifying layers appear sharp, whereas the edge of the circular shape formed by the circular gap in the top opacifying layer on each side appears softer. This suggests to me that that edge of the circular gap on the top opacifying layers is applied multi-tonally or halftone to provide a softer transition.”

18. Mr Power states at paragraph 245:

    “The approach in the D-NB-A Security Feature is a different type of approach to a security feature of any of the Amended Claims, where sub-images in different opacifying layers in combination define a multi-tonal image. Accordingly, at least the following key features of independent Amended Claims 1, 8, 10 and 15 are not disclosed:

    (a) there is no plurality of overlapping opacifying layers having gaps (plural) defining different respective sub-images, the sub-images in combination defining a multitonal image, as required by features 1(c) and 8(c) (and the corresponding features in independent Amended Claims 10 and 15). In particular, each opacifying layer only has one gap in the shape of a star, and not multiple gaps;
    (b) it follows that I consider the characteristics of the sub-images which give rise to a multi-tonal image as set out in the remaining features of Amended Claim 1 and Amended Claim 8 (and the corresponding features in independent Amended Claims 10 and 15) are not disclosed in the D-NB-A Security Feature. However, for the avoidance of doubt:

    i. in relation to alternative (i) of Amended Claims 1 and 8, none of the opacifying layers of the D-NB-A Security Feature are "multi-tonal, half-tone subimages", as required by features 1(fA)(i) and 8(gA) (and the corresponding features in independent Amended Claims 10 and 15);

    ii. in relation to alternative (i) of Amended Claim 1, there is no additional opacifying layer(s) extending continuously across the region of the substrate containing the the D-NB-A Security Feature, as required by feature 1(fA)(ii) (and the corresponding feature in independent Amended Claim 10);

    iii. in relation to alternative (ii) of Amended Claims 1 and 8, there is no further print which contributes to the image of the star, in a colour which contrasts visually with the white opacifying layers, located between at least one of the opacifying layers and the polymer substrate, as required by features 1(fB) and 8(gB) (and the corresponding features in independent Amended Claims
    10 and 15); and

    iv. the window region of the D-NB-A Security Feature forms part of the star and does not "substantially surround" the star image, as required by feature 8(f) (and the corresponding feature in independent Amended Claim 15).”

19. Several features of claims 1 and 8 are not disclosed in D29 including: multiple gaps, an image of a three-dimensional object, image formed from three opacifying layers. Claim 1 is novel in light of D29. Claim 10 (the method of making the device of claim 1) is also novel.

20. D29 also does not disclose the transparent region substantially surrounding the three-dimensional image. Claim 8 is novel in light of D29. Claim 15 (the method of making the device of claim 8) is also novel.

    D33 – D-BH – Beehive Guardian housenote

21. The Opponent states in their submissions:

    “The Guardian Beehive demonstrate note uses different sized gaps in more than one opacifying layer in combination to create variations in tone for the honeycomb shadow image. The image also includes honeycomb hexagons in coloured inks in alignment with the shadow image structure. Parts of the flowers are in half-toned gold coloured ink and the flowers also include a half-toned white opacifying layer. The honeycomb shadow image feature has a three-dimensional effect.

22. Ms Jones states at paragraph 101:

    “The BHG and BHG Substrate have a large shadow image of a honeycomb-shape hexagonal structure in the centre of the note running across the width, as shown in Figures 22 to 25 below. This shadow image is formed from more than two opacifying layers that overlap to varying degrees to create a multi-tonal effect in the hexagonal structure. Aligned with one side of the hexagonal structure shadow image and forming part of the same overall image are coloured hexagonal shapes that includes three differently coloured G-Switch inks. The G-Switch inks are printed directly onto the substrate on the back first and then the opacifying layers on the back are printed after the G-Switch. You can see on the back that at least one opacifying layer overlaps onto the G-Switch inks to further create different tones in combination with the G-Switch inks. Some of the G-Switch inks are provided in a full window region, but they remain in the same overall hexagonal image.”

23. Mr Power states at paragraph 252:

    “The approach in the D-BH Security Feature is a different type of approach to a security feature of any of the Amended Claims, where sub-images in different opacifying layers in combination define a multi-tonal image. Accordingly, focusing on the hexagons (formed from the opacifying layers) at least the following key features of independent Amended Claims 1, 8, 10 and 15 are not disclosed:

    (a) in relation to alternative (i) of Amended Claims 1 and 8, none of the opacifying layers of the D-BH Security Feature are "multi-tonal, half-tone sub-images", as required by features 1(fA)(i) and 8(gA) (and the corresponding features in independent Amended Claims 10 and 15);

    (b) further, in relation to alternative (i) of Amended Claim 1, there is no additional opacifying layer(s) extending continuously across the region comprising the D-BH Security Feature, as required by feature 1(fA)(ii) (and the corresponding feature in independent Amended Claim 10), particularly given the presence of a window where the Aurora has been applied;

    (c) in relation to alternative (ii) of Amended Claims 1 and 8, there is no further multitone print comprising at least one multi-tone, half tone print working, as required by features 1(fB) and 8(gB) (and the corresponding features in independent Amended Claims 10 and 15).; and

    (d) the D-BH Security Feature does not include a window region which substantially surrounds the D-BH Security Feature, as required by feature 8(f) (and the corresponding feature in independent Amended Claim 15).”

24. It is unclear how many opacifying layers are used to form the sub-images in D33. It is also unclear whether there are a plurality of gaps. All the alternatives in the independent claims (except the mono-tonal variation of claim 8) require half-tone printing which does not appear to be disclosed in D33. Furthermore, the overlapping opacifying layers do not appear to work collectively to provide variation in optical density as required by integer 1(e) and 8(e). I consider claims 1 and 8 (and claims 10 and 15) to be novel in light of D33.

    Novelty conclusion

25. I have found that all the prior art documents do not disclose the three-dimensional images formed of the three opacifying layers as presently defined in all claims (except for claim 8 with option 8(gA)).

26. With respect to claim 8 with option 8(gA), I have found that the prior art documents D21, D14, D2, and D4 disclose the three-dimensional image formed from two opacifying layers (including one half-tone print layer). Of these documents, only D4 discloses the half-tone print layer to be “disposed over substantially the whole area of the polymer substrate”. However, D4 discloses the image in only a single gap. D21, D14, D2, and D4 do not disclose the additional feature of claim 8 of the three-dimensional image being substantially surrounded by a transparent region.

27. Thus, I have found the independent claims to be novel. It follows that the dependent claims are also considered novel.

    Inventive step

    Inventive step legal principles

1. It is a requirement of subsection 18(1) of the Act that an invention, so far as claimed in any claim, involves an inventive step. Subsection 7(2) states that an invention is taken to involve an inventive step unless it would have been obvious to a person skilled in the art in the light of the common general knowledge, considered alone or together with the prior art:

   For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed (whether in or out of the patent area) before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).
   
   

2. Subsection (3) prescribes the information that may be considered as:

   The information for the purposes of subsection (2) is:

   (a) any single piece of prior art information; or

   (b) a combination of any 2 or more pieces of prior art information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have combined.
   
   

3. Prior art information is information that is part of the prior art base, and the prior art base is information in a document that is publicly available and information made publicly available through doing an act. Once the common general knowledge and prior art information have been identified, the question is whether the claimed invention would have been obvious. Various verbal tests have been set out to explain this question. In Wellcome Foundation Ltd v V.R. Laboratories (Aust.) Pty Ltd [1981] HCA 12; (1981) 148 CLR 262 Aickin J stated:

   "The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not."

   Consideration

   claims 1 and claim 8 option 8(gB)

4. The Opponent states in their submissions at paragraph 30:

   “There is almost an infinite number of ways in which existing well-known techniques – including printing with various coloured inks, and using opacifying layers to create elements of design (expanded upon below) – can be used to create new and distinctive features as a matter of visual design. Ms Jones gives an example of this in her evidence, responding to Mr Power and the role of banknote designers:

   This would include the combination of known features in new ways. An example of this is the Mexican 50 Pesos where the tonal orange butterfly is overprinted with white opacifying layers. This was not a feature that came from R&D but, rather, was something that the Banknote Designers came up with and whilst it’s not particularly ground breaking, it is a security feature which increases complexity and security.”

5. The Opponent goes on to provide examples of prior art bank notes that contain individual features of the independent claims.

6. The Opponent then states at paragraphs 49 and 50:

   “It was well-known to use opacification layers to create a wide variety of visual features on a polymer banknote, including visual features that had variations in tone both through the use of half-toning, as well as through the layering of the opacification layers.

   Mr Power made no suggestion that any of the above techniques was not known, or straight-forward.”

7. The Applicant states in their submissions at paragraphs 40-43:

   “It was neither known nor obvious to use a multiplicity of opacifying layers to create three-dimensional images

   As is apparent from the discussion above, the Opponent says that the present Application is an inventive solution to an existing problem (cf OS [25]). That view is supported by the evidence of Mr Power, who was actually working in the field of polymer document substrate used for security print media, and who had considered how to achieve integral security features.

   Mr Power (unlike Ms Jones) addressed the question of what he would have been directly led as a matter of course to try as a useful security feature on a polymer banknote as at September 2015 (which is a problem he was actually working on at the time). His answer did not involve the use of gaps in opacifying layers to create sub-images which would create a three-dimensional image when the layers were combined. Rather, he worked with UV inks, embossing features, new optically variable inks, microlenses and microimages, nanoparticle inks and optically variable devices.

   Ms Jones was not asked any similar question, and her analysis of the question of inventive step, after reading the Application, is hindsight driven.

   Although Ms Jones was not asked how she might have integrated a security feature into a security print medium, she suggested in her discussion of the common general knowledge that opacifying layers were used to create multi-tonal images [paragraph 58-59 of the first Jones Declaration]:

   The second method involved creating the multi-tonal image using multiple overlapping opacifying layers. Different parts of the image are formed out of different opacifying layers, such that the overlapping portions of the layers "build up" opacification and therefore have a darker appearance than non-overlapping portions, creating a multi-tonal effect.

   In my experience, this second technique works well for images without intricate detail but not for other images that require intricate detail, such as portraits. This is because imperfect registration between each layer forming the image can result in the distortion of fine details. For this reason, although I would have liked to have used this second technique before the Priority Date, it was usually not feasible from a technical perspective.

   Two things may be observed about this evidence. The first is that it is unsupported by the prior art. Ms Jones does not identify any examples in which opacifying layers are built up to create a multi-tonal effect. In the prior art which is relied upon, tonal variations are created by use of a single, half-tone, opacifying layer. The second is that Ms Jones did not consider that the approach was technically feasible, because of a concern about imperfect registration, and so did not use it.”

8. None of the prior art discloses making a three-dimensional image on a substrate using three opacifying layer including a half-tone print layer.

9. The Latitude banknote (D4) is the clearest example of how the layers of the prior art security documents are assembled. The presentation shown at the international conference shows the separate layers of the banknote. Although the banknote is composed of many layers, the part of the banknote that contains the three-dimensional image (the hourglass, the man, and the sand) are made of only two opacifying layers.

10. It is notable that in the Latitude banknote the three-dimensional image is the utilisation of different visual effects in the same layer. For example, the blue opacifying layer has the man made of a solid shade of blue, while the sand is printed in dots (half-tone printing) which gives lighter shade of blue.

11. Thus, it appears that the Latitude banknote utilises a minimal number of layers in the three-dimensional image while still producing a complex and interesting visual effect. In light of Ms Jones’ evidence (paragraph 58-59 of the first Jones Declaration), I consider that the person skilled in the art would not be motivated to modify any of the prior art documents to include more opacifying layers to form the three-dimensional images.

12. I am not satisfied that a person skilled in the art would, as a matter of routine, modify any of the prior art documents to increase the number of overlapping opacifying layers to create multi-tonal regions as presently defined. Thus claim 1 and claim option 8(gB) are considered inventive in light of the prior art.

    Inventive step analysis of claim 8 option 8(gA)

13. I have found that D21, D14, D2 and D4 disclose three-dimensional images formed from two overlapping opacifying layers. Of these documents, only D4 discloses the half-tone print layer to be “disposed over substantially the whole area of the polymer substrate”.

14. Security document with a printed image substantially surrounded by a transparent region were considered well known before the priority date. For example, the Australian $20 and $50 bank notes have this feature. However, in these cases the images are composed of a single opacifying layer.

15. The description states at page 10 lines 19 to 25:

    “The security print medium could be configured such that at least one opacifying layer is present at every point across the region, so that the document substrate does not appear transparent. However, to increase the visibility of the security feature, and to add an additional level of security, in preferred embodiments, at least one transparent window region is formed by aligned gaps in each of the opacifying layers, the at least one transparent window region preferably substantially surrounding the multi-tonal image.”

16. Thus, the purpose of the transparent region substantially surrounding the multi-tonal image is to increase the visibility of the security feature. I consider that this provides a technical effect (rather than merely artistic effect) to the invention.

17. There is no evidence that D4 would have been modified such that the three-dimensional images would be surrounded by a transparent region. I am not satisfied that claim 8 option 8(gA) lacks an inventive step in light of D4 (or any of the other prior art documents).

    Conclusion

18. Claims 1-16 are novel and inventive in light of the prior art documents raised by the Opponent.

19. The claimed invention is supported by the specification. The claims are clear.

    Costs

20. It is the usual practice that costs follow the event. However, the specification was amended during the opposition. Based upon the evidence supplied in this opposition, the Applicant can be taken to have essentially conceded the opposition had merit up to the time the amendments were allowed. After the amendments were allowed, the Opponent has been unsuccessful in their opposition.

21. Costs are awarded according to Schedule 8 against the Applicant up to the day the parties were informed that the amendments were allowed (17 February 2023). Costs are awarded against the Opponent from the day after the amendments were allowed (18 February 2023).

    Xavier Gisz

    Delegate of the Commissioner of Patents