CCL Secure Pty Ltd v De La Rue International Limited - [2024] APO 35

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
CCL Secure Pty Ltd v De La Rue International Limited [2024] APO 35
Patent Application: 2014266991

Title:Security documents and methods of manufacture

Patent Applicant: De La Rue International Limited

Opponent:CCL Secure Pty Ltd

Delegate:Xavier Gisz

Decision Date: 20 August 2024

Hearing Date: Written submissions filed on 14 March 2024

Catchwords: PATENTS - section 59 – final determination – the amendments introduce a new ground of invalidity – support – further opportunity to amend – no award costs

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

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2014266991

Title:Security documents and methods of manufacture

Patent Applicant: De La Rue International Limited
Date of Decision: 20 August 2024
DECISION
Claim 1 lacks support. Claims 3-6 (when appended to claim 1) lack support.

I allow the applicant 2 months to overcome the lack of support.
No award of costs is made.
REASONS FOR DECISION

Background

The background of this application was provided in the previous final determination decision - CCL Secure Pty Ltd v De La Rue International Limited [2023] APO 39 (28 June 2023) - and a full history of the application (up to the time that decision was issued) is unnecessary to repeat here.
Following the previous final determination decision I allowed the Applicant to make amendments to overcome the findings that the amended claims 1, 2, 4-7, and 9 lack an inventive step in light of AU 2010294467.
Amendments were proposed on 18 August 2023. Following correspondence between the Examiner and the parties, the amendments were allowed on 3 January 2024.
The final determination was heard by way of written submissions. The Opponent’s submissions in support were filed on 14 March 2024. The Applicant’s submissions in answer were filed on 12 April 2024. The Opponent’s submissions in reply were filed on 26 April 2024.
On 10 May 2024 I sent a letter to the parties inviting submissions on the construction of the “full window” and “half window” and how this affects the support (s 40(3)) of the claims. The Applicant filed submissions on 7 June 2024. The Opponent did not file submissions.
Applicable Law
It is well established that the decision of a delegate in opposition proceedings determines the matter finally, subject to appeal (R v Smith (Commissioner of Patents); Ex parte Mole Engineering Pty Ltd [1981] HCA 25; (1981) 147 CLR 340 at 348-349). There is no scope for the Commissioner to re-open or re-hear matters that had already been determined in the previous decision. Thus, in a final determination the only questions are whether the amendments to the specification overcome the deficiencies identified in the previous decision and whether the amendments introduce any new deficiencies. New deficiencies are grounds of opposition that arise solely from the amendment of the specification. That is, pre-existing deficiencies are excluded (Iluka Midwest Ltd v Technological Resources Pty Ltd [2002] FCA 1233 at [34]).
The first decision
In the first decision I found Claims 1-6 and 8 lack an inventive step in light of AU 2010294467 (AU’467).
The previous final determination decision
In the previous final determination decision I found the amended claims 1, 2, 4-7, and 9 lack an inventive step in light of AU 2010294467.
The amendments
The marked-up version of amendments proposed on 18 August 2023 to independent claim 1 (with respect to the claims considered in the previous final determination decision) is as follows:
1. A method of manufacturing a security document, comprising:
providing a polymer substrate, and then, in any order:
(a) applying at least one opacifying layer to the first ~~and/or second~~ surface of the substrate and applying at least one opacifying layer to the second surface of the substrate,
whereby a plurality of laterally-spaced window regions are defined by corresponding gaps in the ~~at least one~~ opacifying layers,
including applying at least one opacifying layer to the first surface of the substrate which comprises gaps defining the plurality of window regions,
wherein at least one of the window regions is a full window region, the at least one opacifying layer on the second surface of the substrate including a gap at least overlapping with one of the gaps in the at least one opacifying layer on the first surface of the substrate to form the full window region, and
wherein at least one of the window regions is a half window region, the at least one opacifying layer on the second surface of the substrate overlapping another one of the gaps in the at least one opacifying layer applied on the first surface of the substrate to form the half window region, at least one of the opacifying layers on the first surface of the substrate being present between the laterally-spaced window regions, wherein the at least one opacifying layer is an opacifying coating comprising a binder containing a dispersion of white particles; and
(b) providing a security device in each window region by at least forming an optically variable effect generating relief structure on the first ~~or second~~ surface of the substrate, each of the respective security devices exhibiting an optically variable effect of different appearance from one another;
wherein in step (b) each optically variable effect generating relief structure is formed using a cast-cure process comprising:
(b1) applying a layer of curable material to the first ~~or second~~ surface of the substrate within each window region, wherein the layer of curable material is discontinuous between the window regions;
(b2) forming the respective relief structures in the surface of the curable material; and
(b3) curing the curable material such that the respective relief structures are fixed
where steps (b2) and (b3) may be performed simultaneously or sequentially;
and wherein a plurality of the optically variable effect generating relief structures are formed in respective window regions on the same surface of the substrate using a common cast-cure process.
It is notable that claim 3 of the claims before the present amendments was found to be inventive, has been renumbered claim 2 as a result of the amendments.
The amendments introduce several new features to claim 1. I will first consider whether those features introduce new issues. For reasons that will become obvious, it is then unnecessary to determine whether the amendments overcame the deficiencies of the first decision.
Claim construction
Full and half window
In my first decision I found at paragraph 47:
A full window is a region that is visible from both sides of a security document. This is achieved by positioning a visible layer on a transparent substrate. An example of a full window is shown in Figure 1(b):
And at paragraph 54:
I have thus construed that a ‘half-window’ comprises a transparent substrate with a visible layer (typically an optical variable device) on one side and an opacifying layer on the other side. A half window is only visible from one side of the security document.
Although not explicitly stated in the claim I found that the full and half window must be formed on a transparent substrate, as this is inherent from the function of the full and half windows.
Support - s 40(3)
Legal principles
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”.
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
In the letter of 10 May 2024 I stated:
“I am not presently satisfied that the terms “full window” and “half window” have a clear and unambiguous meanings. The construction of these terms will impact on the grounds of validity in the final determination of the matter, especially the grounds support and inventive step.
…
The Opponent’s letter of 11 September 2023 (regarding the allowability of the amendments) states:
The amendments also introduced changes to features listed under step (b) and (b1) of claim 1. Step (b) has been amended such that the optically variable effect generating structures are formed on the first surface of the substrate. Step (b1) has been amended to require a layer of curable material to be applied to the first surface of the substrate. The Opponent notes that the only example provided in the Opposed Application, that includes both a full window and a half window, is in Fig 2(d) below. However, the optically variable effect generating relief structures are formed on opposing surfaces of the substrate 22. They are not formed on the same surface of the substrate, as required by the amended claim 1.
The rest of the examples provided in the Opposed Application do not show a combination of a half window and a full window, wherein each window includes an optically variable effect generating relief structure on the same surface of a substrate formed by common cast-curing.
In response, the Applicant’s letter of 5 October 2023 states:
“Figure 8(c) of the application as filed includes a full window region 138a and a half window region 138b, each with relief structures formed on the upper surface. Following discussion of Figure 8, the application as filed noted in page 35, lines 12 to 14, that “the use of a common cast cure process to form multiple relief structures on at least one side of the document (preferably all of the security reliefs provided on that side of the document) is strongly preferred” and so it is clear these relief structures may be formed in the manner now claimed. The amendment therefore does not extend beyond the disclosure of the application as filed.”
Figure 8(c) is reproduced below:
Is region 138a in Figure 8(c) a full window?
The description (corresponding to figure 8(c)) states at page 33 line 30 to page 34 line 19:
“On the document 130, two window regions 138a and 138b are provided. Window region 138a is a full window region defined by overlapping gaps in a first opacifying layer 135 provided on the upper side of substrate 132 and second opacifying layer 136 provided on the underneath surface of the substrate 132. The window region 138b in this example is a half window defined by a gap in opacifying layer 135 only. As shown best in Figure 8c, two security devices 140a and 140c are provided in window region 138a on opposing sides of the substrate 132. In this example, each of the security devices 140a and 140c is a diffractive element such as a hologram and is of substantially the same construction as that described above with respect to security devices 10a and 10b in the Figure 1 embodiment. The security devices 140a and 140c are preferably provided in register to one another such that they both appear to have the same location when the document is viewed from either side. In a particularly preferred embodiment, the two security devices 140a and 140c replay images of the same holographic object, but from different viewpoints. Thus, in the example depicted in Figure 8, security device 140a replays an image of a block arrow pointing towards the viewer as shown in Figure 8a, whereas the security device 140c depicts the same block arrow pointing away from the viewer, as shown in Figure 8b. Thus, in combination, the two security devices 140a and 140c give the impression of a single three dimensional holographic object which the viewer can see from different aspects, spaced in this example by 180 degrees. This is particularly visually effective where the reflection enhancing material layer on the surface relief forming each of the security devices is transparent or semitransparent, for example formed by a very thin layer of metal or a screened metal layer. In this way, the window appears transparent and the holographic images appear suspended within it.”
Although the description explicitly states that region 138a is a full window, I am not satisfied that this embodiment is an unmistakable disclosure of a full window. A full window, in the context of the claims, is a relief structure located on the first surface of a transparent substrate. If there is opaque coating on the bottom surface of the substrate (underneath the relief structure on the top surface), then this becomes a half window. Notably, I consider that the opaque coating could be a layer of any material that is opaque, be it white paint or a thin metal layer (as in the case of a diffractive security device).
In embodiment shown in Figure 8(c), the element 140c located on the bottom surface of the substrate appears to be opaque. This is inferred from the example of the “block arrows”: the diffractive element that appears as a “block arrow” is pointing toward the viewer in the top element 140a, while the diffractive element that appears as a “block arrow” in pointing away from the viewer in the bottom element 140c. The two “block arrows” are presumably opaque since only one “block arrow” can be seen from one side.
The final two sentences of the above excerpt state at page 34 lines 14 to 19:
“This is particularly visually effective where the reflection enhancing material layer on the surface relief forming each of the security devices is transparent or semitransparent, for example formed by a very thin layer of metal or a screened metal layer. In this way, the window appears transparent and the holographic images appear suspended within it.”
This disclosure provides the option that the security device can be transparent or semitransparent formed by a very thin layer of metal or a screened metal layer. However, as noted above, the transparent and semitransparent security device options appear to be inconsistent with the “block arrows” embodiment.
Regarding the semitransparent option, the description suggests that a window region will only be a full window if it is on a transparent substrate and will otherwise be a half window at page 10 lines 4 to 6:
“In a half window region the document will be translucent, relative to its surroundings, rather than transparent. Half windows are known from EP-A-0935535 for example.”
The description states at page 16 lines 23-26:
“The window regions could include full window regions and/or half window regions as discussed above, and where the window region is a full window region, security devices can be provided on both sides of the substrate in the same window as previously mentioned.”
However, to be consistent with the previous understanding of full and half windows, this excerpt would only relate to a full window when the security device on the opposite side of the substrate is substantially transparent and not opaque.
A plausible explanation is that the area immediately surrounding the (opaque) security device is transparent. Thus, in the example of the “block arrow” it might be the case that the opaque “block arrow” diffractive element has a transparent surrounding. Thus, the term full window might include within its scope a composite area of full window and half window areas. Though a plausible explanation this is quite confusing and this is not supported by the description.
The term “full window” is unambiguous when a security device is located on a transparent substrate with nothing on the underside. However, in the other situations and embodiments discussed above (where there is a security device on the underside) the term “full window” is ambiguous.
Applicant’s submissions on support
The Applicant’s submissions provided two alternative explanations of why the embodiment shown in Figure 8(c) provides support to claim 1.
First alternative explanation
The first alternative explanation is that the refractive elements 140a and 140c have different levels of transparency and reflectivity depending on which side they are viewed from.
First aspect of the first alternative explanation
The first aspect of the Applicant’s first explanation is as follows. At paragraphs 4.1-4.3 the Applicant states:
“Firstly, a transparent reflection enhancing material, as disclosed in page 34, lines 15 and 16, works by having a refractive index that is higher than the refractive index of the substrate on which it is provided. Indeed, such transparent reflection enhancing layers are often called high refractive index layers (HRI layers), as stated on page 16, lines 20 to 21, of the specification as filed. However, the enhanced reflection of this layer arrangement is reliant on the order of the layers, i.e. that when viewed in reflection the HRI layer is on top. When the second security device 140c, formed using a transparent HRI layer, is viewed in reflection from the opposite side, the layer order will be reversed, such that the HRI layer is behind the relief structure. In this arrangement, the HRI layer will no longer enhance reflection. Instead, it will reduce reflection, tending to make the hologram less visible in reflected light. This can be understood from simple consideration of Snell’s law, as illustrated in the below diagram:
When viewed in reflection from the top side (as illustrated on the left part of the diagram above), which is analogous to viewing device 140c from the rear side of the document, the refractive index difference at the boundary promotes total internal reflection and so enhances reflection from the holographic relief. However, when viewed in reflection from the lower side (as illustrated on the right side of the diagram above), which is analogous to viewing device 140c backwards from the front side of the document, the refractive index difference at the boundary promotes transmission of light instead of reflection.
As a result of the above, i.e. because device 140c will have a reduction in reflection from the holographic relief when viewed from the “wrong” side, the holographic image will not, or at most barely, be visible when viewed from the front side even when transparent HRI layers are used. This is why the specification states that the result is that “the window appears transparent and the holographic images”, i.e. from their respective sides, “appear suspended within it”.”

These submissions appear to conflate reflectivity with opacity/transparency. The present consideration is restricted to the opacity/transparency of an element.
These submissions also seem to be inconsistent with the Helmholtz reciprocity principle which provides that incoming and outgoing light can be considered as reversals of each other. A consequence of the Helmholtz reciprocity principle is that light travelling through an element in one direction, travels though the element at the same intensity in the opposite direction.
I do not accept that the opacity/transparency of an ordinary element can be different depending upon the side it is viewed from. Although devices known as ‘optical isolators’ exist that have opacity/transparency which is different depending upon the side it is viewed from, these require strong magnetic fields applied to an exotic material and are not considered an ordinary element.
The opacity/transparency of the “block arrow” is not explicitly stated in the description, however I consider it inherent that it must have some appreciable level of opacity (to be discernible as a “block arrow”). Consequently, I am not satisfied by the Applicant’s first aspect of their first explanation that region 138a is a full window as defined in the claims.
Second aspect of the first alternative explanation
The second aspect of the Applicant’s first explanation is as follows. At paragraph 4.4 the Applicant states:
“Secondly, even if both relief structures reflected light equally (which they do not, for the reasons given above), then it would still be the case that from the front, the front device 140a would appear brighter, and from the rear, the rear device 140c would appear brighter. This is because whichever device is on top will be subject to more incident light, with the device underneath only receiving light that has transmitted through the first device. This will always contribute to the image of the upper device being more visible than any image from the lower device. Therefore, it may not be the case that the viewer cannot see the device on the other side at all, just that they predominantly see the block arrow pointing towards them from one side and predominantly see the arrow pointing away from them from the other side. This is consistent with the described embodiment, since the viewer would still perceive mainly an arrow pointing towards them from one side and mainly an arrow pointing away from them on the other side.”
This seems to be a concession that the rear device 140c is not transparent, and thus this region is not a full window. Consequently, I am not satisfied by the Applicant’s second aspect of their first explanation.
Second alternative explanation
The second alternative explanation provided by the Applicant is provided in their submissions at paragraphs 5.1 to 5.5:
“Secondly, even if the Hearing Officer does not accept the above argument and remains of the view that a security device of the type described, with transparent layers, is not possible, then the window 138a would still contain a device in a full window even if each security device were opaque and the regions with the opaque lower device considered to be half window regions.
For example, the image below shows the window region 138a of Figures 8(a) and 8(b) in superposition. The block arrow from the rear (Figure 8(b)) is shown in red to clearly distinguish the different regions of the two devices. As is made clear from this representation, there are parts of the window region in which only the upper device 140a is present. Those parts constitute full window parts with only one security device on the first side.
In particular, even accepting the preliminary view set out in the Letter that the window is a half window where the security device 140c (red arrow) is present and opaque, the above window region would contain four different types of area within the window region (as shown using the numbered labels):
1. full window areas with no security device on either side (the areas outside of both arrows);
2. full window areas in which the upper security device 140a is present but the lower security device 140c is not present (areas in which the black arrow is present outside of the red arrow);
3. half window areas in which the lower security device 140a is present but the upper security device 140a is not present (areas in which the red arrow is present outside of the black arrow); and
4. half window areas in which the upper security device 140a overlaps the lower security device 140c (areas in which the black arrow overlaps the red arrow).
Accordingly, the window region 138a may be seen as a composite window, including parts that are full window areas and parts that are half window areas. However, all features of the claim in respect of the full window region would still be described by the specification, in particular by areas of type 1 and 2 identified above, and so the claim is supported by the specification. For example, there is still an opacifying layer that is present between the laterally-spaced window regions, i.e. the layer 135 is present between the full window areas of window 140a (areas 1 and 2) and the half window 140b on the upper surface.
It is irrelevant in assessing whether the claim is supported that the above embodiment would have additional features not stated in the claim (e.g. additional half window areas, 3 and 4, contained nested within the full window areas).”
The Applicant asserts that the full window region could actually contain half window areas within it. However, claim 1 states that the window regions are defined by the gaps in the opacifying layer.
A full window is defined by the gaps in the opacifying layers overlapping, while half windows are defined by the gap on one side being overlapped by opacifying layer. The way the claim defines full and half windows, a single window cannot be both a full window and a half window.
It is inconsistent with the claim that a full window region could contain half window areas. Consequently, I am not satisfied by the Applicant’s second explanation that region 138a is a full window.
I consider that claim 1 and all claims dependent on claim 1 are not supported by the embodiment shown in Figure 8(c) and the accompanying description.
Are there other aspects of the specification which could provide support?
I have found that the embodiment shown in figure 8(c) and the accompanying description does not provide support for claim 1. I will now determine if there are any other aspects of the specification which could provide support.
Can a modified version of the embodiment of figure 8(c) provide support?
The difference between the invention defined in claim 1 and the embodiment shown in Figure 8(c) is the inclusion of security device 140c. That is, if security device were omitted from the embodiment shown in Figure 8(c), then the embodiment would provide support to claim 1.
The purpose of the security device 140c is to work in conjunction with the security device 140a, to provide the interesting optical effect of the block arrow described at page 34 lines 12 to 14:
“…[I]n combination, the two security devices 140a and 140c give the impression of a single three dimensional holographic object which the viewer can see from different aspects, spaced in this example by 180 degrees.”
I am not satisfied a modification of the embodiment of Figure 8(c) that would remove the aforementioned optical effect could be considered implicitly disclosed.
Can a modified version of the embodiment of figure 2(d) provide support?
One embodiment of the present invention which discloses most of the features of claim 1 is Figure 2(d) and is shown below:
The corresponding description states at page 25 lines 16 to 24:
“In the example depicted in Figure 2d, the first window region 28a is now a "half window", with second opacifying layer 6 on the underside of the substrate 22 extending across its area. As such, here the security device 30a must be configured such that the optically variable effect is visible from the upper side of the document. In the second window region 28b, in this example the second security device 30b is disposed in a gap 29b in the second opacifying layer on the underneath surface of substrate 22 aligned with gap 27b in the first opacifying layer 25 such that window region 28b is a "full window". The security device 30b may be visible from either or both sides of the document.”
The embodiment of Figure 2(d) and accompanying description appears to disclose all the features of claim 1 except that there is an “optically variable effect generating relief structure” on each side of the substrate; the half window being formed with an “optically variable effect generating relief structure” on the first (i.e. top) surface of the transparent substrate, the full window being formed with an “optically variable effect generating relief structure” on the second (i.e. bottom) surface of the transparent substrate.
If the embodiment of Figure 2(d) was modified such that the security element 30b was switched sides on the substrate, then this modified embodiment would fall within the scope of claim 1. In the context of the immediately preceding embodiments of figures 2(b) and 2(c) which have two full windows with the security devices on the same side, it appears that in the embodiment of figure 2(d) the full and half windows with the security devices on opposite sides appears to be a deliberate choice, and not merely an arbitrary arrangement. Consequently, I do not consider this modification to be implicitly disclosed.
Can the rest of the specification ‘as a whole’ provide support?
Consistory clause
The amendments to the specification made on 18 August 2023 include a consistory clause that mirrors the amendment made to claim 1. As was found in Merck, a consistory clause alone does not provide support to a claim.
Individual features
I consider the technical contribution to the art of the present invention is a method of manufacturing a security document with two different security devices. Although each of the security devices (half window and full window) are well known, the invention resides in a manufacturing process that: a) keeps the opaque and security device elements of each window region on the first (top) and second (bottom) in registration and b) is capable of forming both types of window region in the same security document.
The individual features of claim 1 are disclosed in various embodiments in the description. In particular, the feature of a half window formed with a security device on the first (top) surface of a transparent substrate, and also the feature of a full window formed with a security device on the first (top) surface, are individually disclosed.
However, I am not satisfied that individually disclosed features in disparate embodiments could be combined to form an implicit disclosure of the invention defined in claim 1. Indeed, the claimed invention resides in combining the known features of full and half windows into a security document, and so assuming that disparate features are implicitly disclosed in the combined form would subvert the expectation that the characterising feature is explicitly disclosed.
An alternative construction
The claims define steps of manufacturing a security document. The first step is applying white opacifying layers to the first and second (top and bottom) surfaces of a substrate to form windows.
It could be argued that in the embodiment of Figure 8(c) the security device 140c is added after the windows are formed, thus the presence of security device 140c (which is opaque) is irrelevant to whether a full window is formed in region 138a.
I consider this argument to be unpersuasive. If a window was formed in a first step in a process only for it to be covered in a subsequent step, it cannot be considered a window and is not within the scope of the claim.
Support conclusion
I have found that the embodiment of figure 8(c) argued by the applicant to provide support to claim 1, does not provide support. I have also found that other aspects of the specification do not provide support to claim 1. Claim 1 is not supported by the description. It follows that the claims dependent on claim 1 (claims 3-6 when appended to claim 1) are not supported by the description.
Consideration of inventive step of claim 1 is moot
I have found that claim 1 lacks support. Furthermore, claim 1 lacks support in a significant way in that it cannot be overcome by merely excising/carving out aspects that are unsupported. I consider it serves no purpose to determine if such an unsupported claim is inventive.
Should the Applicant be given a further opportunity to amend?
The amendments were made ostensibly on the basis of the Applicant’s belief that modification of ‘467 to print on both a first side and second side of the substrate as to form full windows and half windows would be non-obvious to a person skilled in the art.
I have found that there is insufficient support in the specification for manufacturing a security device with full windows and half windows as presently defined in claim 1.
As only narrowing amendments can be made, it is unclear how claim 1 could be amended to overcome the finding of lack of support. Claim 1 does not merely encompass unsupported material, it is limited to unsupported material. However, there is no objection to claim 2, such that it is clearly possible for a valid patent to be granted. Thus, it is clear that valid amendments are possible, e.g. removal of the claims found to lack support.
The Applicant has been given ample opportunity to overcome the finding in the first decision. Indeed, more than three years have elapsed since the first decision was issued in which time the Applicant has amended the claims four times.
I allow the Applicant the opportunity to amend the claims. However, I note that if further amendments are found to be any one of: a) non-allowable, b) not overcoming all issues of validity, or c) introducing another validity issue, then it is unlikely that any further opportunity to amend will be provided.
Conclusion
Claim 1 lacks support. Claims 3-6 when appended to claim 1 also lack support.
I allow the applicant 2 months to amend the specification to overcome this lack of support.
Costs
Costs typically follow the event.
Support was an issue raised by the Opponent when the allowability of the amendments were being considered. However, support was not an issue raised by the Opponent in their submissions in the final determination.
Although the Opponent had previously flagged the support issue which ultimately formed the basis of the lack of support decision, I do not consider the Opponent to be successful in their actual opposition in the final determination.
I make no award of costs.
Xavier Gisz
Delegate of the Commissioner of Patents
Annex – Claims with the amendments of 18 August 2023
THE CLAIMS DEFINING THE INVENTION ARE AS FOLLOWS:
1. A method of manufacturing a security document, comprising:
providing a polymer substrate, and then, in any order:
(a) applying at least one opacifying layer to the first surface of the substrate and applying at least one opacifying layer to the second surface of the substrate, whereby a plurality of laterally-spaced window regions are defined by corresponding gaps in the opacifying layers, including applying at least one opacifying layer to the first surface of the substrate which comprises gaps defining the plurality of window regions, wherein at least one of the window regions is a full window region, the at least one opacifying layer on the second surface of the substrate including a gap at least overlapping with one of the gaps in the at least one opacifying layer on the first surface of the substrate to form the full window region, and wherein at least one of the window regions is a half window region,   the at least one opacifying layer on the second surface of the substrate      overlapping another one of the gaps in the at least one opacifying layer applied       on the first surface of the substrate to form the half window region, at least one of the opacifying layers on the first surface of the substrate being present between     the laterally-spaced window regions, wherein the at least one opacifying layer is    an opacifying coating comprising a binder containing a dispersion of white particles; and
(b) providing a security device in each window region by at least forming        an optically variable effect generating relief structure on the first surface of the substrate, each of the respective security devices exhibiting an optically variable effect of different appearance from one another;
wherein in step (b) each optically variable effect generating relief structure       is formed using a cast-cure process comprising:
(b1) applying a layer of curable material to the first surface of the substrate within each window region, wherein the layer of curable material is discontinuous between the window regions;
(b2) forming the respective relief structures in the surface of the curable material; and
(b3) curing the curable material such that the respective relief structures           are fixed
where steps (b2) and (b3) may be performed simultaneously or           sequentially;
and wherein a plurality of the optically variable effect generating relief structures are formed in respective window regions on the same surface of the substrate using a common cast-cure process.
2. A method of manufacturing a security document, comprising:
providing a polymer substrate, and then, in any order:
(a) applying at least one opacifying layer to the first and/or second surface        of the substrate, whereby a plurality of laterally-spaced window regions are     defined by corresponding gaps in the at least one opacifying layer, at least one of the opacifying layers being present between the laterally-spaced window regions, wherein the at least one opacifying layer is an opacifying coating comprising a binder containing a dispersion of white particles; and
(b) providing a security device in each window region by at least forming                  an optically variable effect generating relief structure on the first or second surface of the substrate, each of the respective security devices exhibiting an optically variable effect of different appearance from one another;
wherein in step (b) each optically variable effect generating relief structure                 is formed using a cast-cure process comprising:
(b1) applying a layer of curable material to the first or second surface of          the substrate within each window region, wherein the layer of curable material is discontinuous between the window regions;
(b2) forming the respective relief structures in the surface of the curable material; and
(b3) curing the curable material such that the respective relief structures            are fixed
where steps (b2) and (b3) may be performed simultaneously or         sequentially;
and wherein a plurality of the optically variable effect generating relief structures are formed in respective window regions on a first surface of the   substrate using a first common cast-cure process, and a second common cast-     cure process is used to form a plurality of optically variable effect generating relief structures on the second surface of the substrate.
3. A method according to claim 1 or claim 2, wherein the different            appearances of the security devices is a result of one or more of:
different information content;
different size of displayed information;
different colour; and/or
different optically variable effect generating mechanism.
4. A method according to any of claims 1 to 3, wherein the relief structures              are formed in register to the gaps defining the window regions in the at least one opacifying layer.
5. A method according to any of claims 1 to 4, wherein in step (b1) of the       common cast-cure process, the curable material is applied to the same surface of the substrate within at least two window regions in a single application step, preferably a single printing step.
6. A method according to any of claims 1 to 5, wherein in step (b2) of the       common cast-cure process, the respective relief structures on the same surface        of the substrate within at least two window regions are formed in a single forming step, preferably a single embossing step.
7. A method according to claim 2, wherein the first and second common cast-     cure processes are performed in register with one another, most preferably in an   in-line manufacturing process.