CCL Secure Pty Ltd v De La Rue International Limited - [2023] APO 39

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
CCL Secure Pty Ltd v De La Rue International Limited [2023] APO 39
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: 28 June 2023

Hearing Date: 28 March 2023, in Video Conference

Catchwords: PATENTS - section 59 – final determination – the amendment does not overcome the grounds of opposition of inventive step – further opportunity provided to amend – costs awarded

Representation: Counsel for the applicant: Frances St John
Patent attorney for the opponent: Ian Lindsay of 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: 28 June 2023
DECISION

The amendments do not overcome the issue of inventive step identified in the first decision. The amended claims 1, 2, 4-7, and 9 lack an inventive step in light of AU 2010294467.
The Applicant has 2 months to propose suitable amendments.
Costs are awarded against the Applicant.
REASONS FOR DECISION

Background

The matter relates to patent application 2014266991 (the Application) in the name of De La Rue International Limited (the Applicant). Following an opposition by CCL Secure Pty Ltd (the Opponent), I, as a delegate of the Commissioner of Patents issued a decision CCL Secure Pty Ltd v De La Rue International Limited [2020] APO 56 (the first decision) on 21 December 2020.
In that decision I found claims 1-6 and 8 lack an inventive step in light of AU 2010294467. I gave the Applicant 2 months to propose suitable amendments to overcome the findings.
On 18 February 2021 the Applicant filed proposed amendments (the first amendments). The first amendments were advertised for opposition on 22 April 2021, and allowed on 1 July 2021.
On 6 July 2021 the Delegate informed the parties that the matter was due for final determination, and asked the parties if they wished to be heard.
On 20 July 2021 the Applicant provided conditional terms on whether they wanted to be heard. The Applicant stated:
“The Applicant would like the opportunity to be heard if:
− the Opponent seeks to be heard; or
− the Delegate considers that the amendments introduce new deficiencies or do not overcome the issues identified in the earlier decision.”
On 4 August 2021 I sent a letter stating that my preliminary view was that the amendments did not overcome the issues identified in the earlier decision.
On 18 August 2021 the Applicant filed further amendments (the second amendments). On 9 September 2021, following correspondence with the parties, the Delegate informed the parties that the final determination would be deferred until the amendments of 18 August 2021 are finally dealt with.
The second amendments were advertised for opposition on 30 September 2021 and allowed on 9 December 2021.
On 19 October 2021 the Applicant filed further amendments (the third amendments). The third amendments were advertised for opposition on 2 December 2021 and were allowed on 11 February 2022.
On 19 October 2021 the Applicant also filed a declaration by Dr Chris Eastell dated 8 October 2021 (the Eastell declaration) providing his opinion on the inventiveness of the feature added by the amendment.
Following correspondence between the parties and the Commissioner, on 21 February 2022 I indicated that I intended to rely upon the Eastell declaration under the provisions of reg 5.23.
On 24 March 2022 I made a direction that I would rely on the Eastell declaration under reg 5.23 and allowed the Opponent (under reg 5.23(2)(c)) 3 months to provide evidence or submissions relating to the Eastell declaration.
On 24 June 2022 the Opponent filed submissions and a declaration by Odisea Batistatos dated 24 June 2022.
The Opponent's written summary of submissions was filed on 14 March 2023, and the Applicant's written summary of submissions was filed on 21 March 2023. The hearing took place on 28 March 2023 by video conference.
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 hearing and decision
In the first decision I found Claims 1-6 and 8 lack an inventive step in light of AU 2010294467 (AU’467).
The amendments
The marked-up version of the independent claims following the last amendment (with respect the claims considered in the first decision) 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 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 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 and wherein each of the respective optically variable effect generating relief structures of the respective security devices differ from each other;
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.
3. 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.
Do the amendments overcome the finding of lack of inventive step?
The Opponent states in their of submissions at paragraph 19:
“Independent claim 1 of the Application has been amended to insert two features:
(a) 'wherein the at least one opacifying layer is an opacifying coating comprising a binder containing a dispersion of white particles' (Feature A); and
(b) 'wherein the layer of curable material is discontinuous between window regions' (Feature B).”
I will adopt the same naming convention of Feature A and Feature B throughout this decision.
Feature A
Feature A specifies that the at least one opacifying layer of paragraph (a), gaps within which define window regions, must be 'an opacifying coating comprising a binder containing a dispersion of white particles'.
This amendment appears to be an attempt to overcome the finding in the first decision by excluding from the meaning of 'opacifying layer' in claim 1 an opacifying layer of the kind disclosed by the optically active surface structure 24 of AU'467.
A cross sectional view of an embodiment of the device of AU’467 is shown in Figure 8:
A plan view of an embodiment of the device of AU’467 is shown in Figure 9:
I consider that Figures 8 and 9 are two views of essentially the same embodiment. Thus, region 33 in figure 8 corresponds with region 39 in figure 9; region 34 in figure 8 corresponds with regions 35-38.
In the first decision I found at paragraphs 111 and 112:
“I consider that the optically active surface structures 24 in ‘467 are opaque. The description of ‘467 states at page 38 line 31 to page 39 line 7:
‘In addition, an advantageous combination of zones 34 having optically variable information items with adjacent zones 33 having an optically variable information item contrasting therewith is possible, for example as individual motifs within an overall motif, in order that the zones 33 can serve as a contrasting optical reference to the optically variable information item in the zones 34. By way of example, there can be movement effects in the regions 35 to 38 and a surrounding region 39 without a movement effect or a movement effect in the region 38 with a region 37 surrounding or adjoining the latter without a movement effect, for example with a hologram and/or with optically variable pigments or else in each case contrary movement effects in the regions 35 to 38.’
Zones 33 in this example are holograms or optically variable pigment, both of which have a sufficient level of opacity to be considered opaque. A hologram is a diffractive structure that is applied to the surface of a substrate as a relief structure that is impressed into the substrate and then metallised. An optically variable pigment could be applied onto the surface of the substrate, or alternatively could be embedded with the lacquer of the substrate. The application of a hologram or variable pigment onto the substrate (but not the embedding variable pigment within the lacquer of the substrate) is considered to be application of an opacifying layer to the substrate.”
I note that I did not find in the first decision that the following excerpt of AU’467 at page 38 line 38 to page 39 line 2 (with my emphasis in underline) was a disclosure of an opacifying layer in region 39:
“By way of example, there can be movement effects in the regions 35 to 38 and a surrounding region 39 without a movement effect…”
This is because the “without movement effect” could be achieved by means other than an opacifying layer. For example, this disclosure could instead be referring to a transparent region.
In their submissions the Opponent argued that there was another part of AU’467 which disclosed the region surrounding the windows (i.e. the window frame) (item 39) to be opacified. Specifically, the final sentence of AU’467 (page 39 lines 17 to 21) states:
“It is likewise possible to provide in the regions 35 to 38 optically variable information items adjacent with optically static information items, for example single colored regions or multicolored, non-optically variable motifs, adjacent to one another.”
The Applicant disagreed that the final sentence of AU’467 was referring to the region surrounding the windows (i.e. window frames) to be opacified, and was instead referring to the windows regions being opacified. The Applicant submissions stated at paragraph 30:
“The disclosure to which CCL refers (“single or multicoloured regions”) comes in the final sentence of the description, which says, “It is likewise possible to provide in the regions 35 to 38 optically variable information items adjacent with optically static information items, for example single-colored regions or multicolored, non-optically variable motifs, adjacent to one another.” That is not about zones 33/39. Again, there is no disclosure that region 39 can be anything other than a hologram or optically variable pigments.”
The Applicant argued in the hearing that this sentence of AU’467 means that the item adjacent the regions 35 to 38 is not the surrounding region 39, but rather other indirectly adjacent regions 35 to 38.
In the hearing I noted AU’467 the word “adjacent” is used in conjunction with the words directly and indirectly in penultimate sentence of AU’467 at page 39 lines 12 to 14:
“…in other regions 35 to 38 directly or indirectly adjacent thereto…”
I can see three possible interpretations of the final sentence of AU’467.
The first interpretation is that the final sentence of AU’467 is referring to only window regions; describing only: a) indirectly adjacent window regions 35 and 36 when separated by the surrounding region 39 (i.e. window frame), and b) directly adjacent when the window regions are touching regions 38 and 37 (the cross-shaped window region 38 inside the larger window region 37).
The second interpretation is that the final sentence of AU’467 is referring to all regions: window regions and surrounding (window frame) region. Thus describing: a) indirectly adjacent window regions 35 and 36 when separated by a surrounding region 39 (i.e. window frame), and b) directly adjacent when the window regions are touching regions 38 and 37 (the cross window region 38 inside the surrounding window region 37), and c) directly adjacent surrounding regions (i.e. window frame).
The third interpretation is that the final sentence of AU’467 is referring to directly adjacent regions. Thus describing (keeping with the same designation of features as the above paragraphs): b) directly adjacent when the window regions are touching regions 38 and 37 (the cross window region 38 inside the larger window region 37), and c) window regions 35-37 directly adjacent to the surrounding region 39 (i.e. window frame).
Reading the final sentence of AU’467 as a whole it is clear the word ‘adjacent’ was included to convey some information. If the intent was the first or second interpretation, then the inclusion of the word ‘adjacent’ obscures, rather than clarifies, the meaning:
·If the first interpretation was the intended meaning, then the sentence would simply refer to window regions.
·If the second interpretation was the intended meaning, then the sentence would simply refer to all regions.
Thus, I can eliminate the first and second interpretations. Consequently, I will adopt the third interpretation. That is, the final sentence of AU’467 is referring to directly adjacent regions. Thus, the final sentence of AU’467 discloses any directly adjacent regions (whether touching windows, or the surrounding region (window frame) between windows) to include optically contrasting elements such that the window regions are provided with optically variable information and the surrounding regions have a contrasting static optical effect. The optically static effect can include single-colour regions.
I have thus determined that, in one embodiment, the surrounding region (item 39) in figure 9 of AU’467 is a single-colour region providing an optically static effect. I consider it inherent that a single-colour region is opaque for the following reason. If the intent of the final sentence of AU’467 was to include a colour-tinted translucent/transparent region, then this would have been stated explicitly (since a colour-tinted translucent region will only appear to be a single colour if viewed against a uniformly coloured background). This leaves the only option that the single-colour region must be opaque.
This simplifies the consideration and renders much of the submissions and evidence unnecessary. The focus of the evidence and submissions was on whether it would be obvious to a person skilled in the art to modify AU’467 to substitute white particles for the flakes in an optically variable pigment. In light of the interpretation of the final sentence of AU’467 I have adopted, it now only needs to be determined whether it would be obvious to a person skilled in the art to select white particles in a binder in a region that is disclosed as being a single-colour (opaque) region.
Would the single-colour region be white?
There is no disclosure in AU’467 of what colour the “single-colour regions” would be. I now must determine whether it would be obvious to a person skilled in the art to select the single-colour region to be white.
The Opponent’s submissions at paragraph 28 summarises the evidence on opacifying layers comprising a binder containing a dispersion of white particles:
“As a starting point, it is clear that the use of opacifying layers that are opacifying coatings comprising a binder containing a dispersion of white particles was well-known before the priority date. (In some cases, 'titanium dioxide particles' are referred to rather than 'white particles'. However, titanium dioxide is white in colour.)
(a) Various prior art documents refer to the use of such layers. For example:
(i) D7 states that 'the opacifying coatings may comprise a pigment, such as titanium dioxide, dispersed within a binder';
(ii) D8 states that 'the opacifying coatings may comprise a pigment, such as titanium dioxide, dispersed within a binder'; and
(iii) D11 states that 'the layers of opacifying ink may comprise pigmented coatings comprising a pigment, such as titanium dioxide, dispersed within a binder'.
(b) D11 cites one of the earliest patent applications concerning polymer banknotes, with a priority date as early as 24 August 1982, which states: 'The treated laminate is coated with a pigment coating comprising a pigment such as titanium dioxide dispersed within a binder'.
(c) The evidence contains numerous references to the fact that such layers were well-known and widely used before the priority date. For example:
(i) Mr Reid refers to the use of 'the usual white opacifying layer';
(ii) Dr Hardwick explains that '[p]rior to 2013, the process that is used to form polymer banknote substrates and its inbuilt security features, is a very well-known in-line printing process … a number of opacification layers, often white in colour, are printed onto the top and bottom surfaces of the transparent film';
(iii) Mr Batistatos explains that '[s]ince 1988 the base layer of all polymer banknotes has been made of a clear polymer film, called biaxially orientated polypropylene ('BOPP'). This film is required to be opacified before the graphics are printed which appear on the surface of the banknote. Opacification involves laying down of white opacifying ink on both sides of the BOPP film'; and
(iv) Dr Hardwick states that 'by "white ink" what I meant is the ink that is commonly used to create window regions or half-window regions in security documents'.
(d) Additionally, Mr Batistatos gave specific evidence that ink comprising a binder containing a dispersion of titanium dioxide particles has been used to form opacifying layers in Australia since 1988. He also gave evidence that the use of such ink (including to form windows) was CGK before the priority date:
"Opaque layers", or "opacifying layers", refer to the ink layers that are routinely applied to a clear polymer substrate film, for the purpose of opacifying the clear polymer substrate film, while in the meantime creating one or more windows or half windows for a security document. The opacifying layers are usually formed in a white colour, due to the titanium dioxide particles dispersed in the ink binder.
Mr Batistatos continued:
[I]f a polymer substrate is used to produce a security document, then there is only one commonly known way to form the opacifying layers. That is, gravure printing a plurality of opacifying layers on each side of the polymer substrate, with an opacifying ink that includes a dispersion of white titanium dioxide particles with a binder. Opacifying layers have been printed using this method since 1988. Other than this method, I am not aware of an alternative opacifying ink that may be used to form the opacifying layers.”

The Applicant states in their submissions at paragraph 23:
“In an attempt to make the submission good, CCL cherry-picks, from various pieces of prior art, references to what are said to be Feature A layers in various prior art documents, including D7, D8, and D11 (CCLS [27]-[28]). However, the fact that Feature A layers were known in the art does not mean that a PSA would have applied such a layer to the product contemplated by AU ‘467, and certainly not that they would have applied such a layer in the specific manner required to arrive at the invention – that is, only in the regions 33/39. In order for this to support an argument of lack of inventive step, CCL would need to have established that the person skilled in the art would have been “reasonably expected to have combined” the prior art documents with AU ‘467 (Patents Act 1990, s 7(3)). That has not been made out.”
The evidence is overwhelmingly in favour of the proposition that in the field of polymer bank notes an opacifying layer made of a dispersion of white particles in a binder was well known at the priority date.
I have found that the final sentence of AU’467 is a disclosure of the region surrounding the window regions (i.e. window frame) to be a single colour (opaque) region. In light of the evidence discussed above, I am satisfied that a person skilled in the art would modify AU’467 such that the region surrounding the window regions (i.e. window frame) would be white, and that the white colour would be formed by a dispersion of white particles in a binder. Consequently, Feature A lacks an inventive step.
Feature B
The Applicant argues that Feature B is not disclosed in AU’467:
“Disclosure of Feature B in AU ‘467 (CCLS [50]-[55]): CCL says that Feature B is disclosed in AU ‘467, because it says the curable material may not be deposited in zones 33/39, which it says are “opacified regions between windows”, the relevant windows allegedly being regions 34.
That argument can be quickly disposed of: the Delegate did not find that regions 34 are windows. That is why CCLS [54]-[55] elides the issue: [54] refers to the Delegate’s (alleged) finding that regions 35 to 38 can be windows, but [55] refers to regions 34 as being windows. There was no such finding.
Further, in the Application, the areas between the windows are opacified with, essentially, white ink. The windows bear the security devices. By contrast, in AU ‘467, zones 33/39 have an optically variable device 24: that is, a security feature. That means zones 33/39 cannot be the areas between the windows contemplated by claim 1.”
The Applicant’s first argument – that AU’467 does not disclose windows – is predicated on only the novelty finding and not on the decision as a whole (including the inventive step finding). I found that regions 34 are not windows only because the carrier layer was not explicitly disclosed as being transparent in the same embodiment as the disclosure of the other features of the claim. However, I found that making the carrier layer transparent in the same embodiment as the disclosure of the other features would be obvious to a person skilled in the art. Thus, with the modification to AU’467 that a person skilled in the art would have made, the regions 34 would indeed be windows.
The Applicant’s second argument is moot in light of my determination that AU’467 does disclose the region surrounding the window regions (i.e. window frame) to be a solid colour pigment.
Figure 8 shows three embodiments of regions 33 and 34. In all three embodiments the top surface of region 34 is formed as microlenses. The first embodiment shows region 33 with no curable material, the second embodiment shows the top surface of region 33 with the curable material formed into microlenses, and the third embodiment shows the top surface of region 33 with the curable material formed into a flat surface.
I consider the first embodiment shown in figure 8 to be curable material to be discontinuous. With the obvious modification of using a transparent carrier, Feature B lacks an inventive step in AU’467.
Conclusion on claim 1
Neither Feature A nor B confers upon claim 1 an inventive step. It follows that the amendments do not overcome the deficiency of lack of inventive step identified in the first decision.
Claim 2
The Opponent states in their submissions at paragraphs 57 and 58:
“New independent claim 2 of the Application includes three supposedly new features: Features A and B, and 'wherein each of the respective optically variable effect generating relief structures of the respective security devices differ from each other' (Feature C).
The insertion of Features A, B and C does not overcome the deficiency of lack of inventive step identified in the Decision. It follows that claim 2 of the Application lacks an inventive step in light of AU'467.”
I have found that Feature A would be an obvious modification of AU’467, and Feature B is disclosed in AU’467. I found in the first decision at paragraph 127 that the optically variable effect in the regions differ from each other, thus Feature C is disclosed in AU’467.
Consequently, claim 2 lacks an inventive step in light of AU'467.
Claim 3
The Opponent states in their submissions at 64 and 66, 67:
“New independent claim 3 of the Application includes four supposedly new features: Features A, B and C, and 'wherein a plurality of 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' (Feature D).
…
Feature D appeared in previous dependent claim 7 (which is now dependent claim 8). CCL accepts that this feature was found by the Delegate to be inventive in light of AU'467, and that this finding is not open to challenge in the final determination.
CCL therefore accepts for the purposes of the final determination of this opposition that independent claim 3 involves an inventive step as a result of Feature D.”
I concur that amended claim 3 overcomes the findings in the first decision.
Claims 4–7 and 9 (previously claims 2, 4–6 and 8)
The Opponent states in their submissions at paragraphs 68-71:
“Each of these claims is ultimately dependent on independent claims 1, 2 and/or 3.
These claims have not been amended since the Decision, save for consequential amendments to claim dependencies to account for the insertion of new independent claims 2 and 3.
To the extent that these claims are dependent on independent claims 1 and 2, for the same reasons given in paragraphs 21–55 and 60–62 above, the amendments do not overcome the deficiency of lack of inventive step identified in the Decision.
To the extent that these claims are dependent on independent claim 3, for the same reasons given in paragraphs 66–67 above, CCL accepts for the purposes of the final determination of this opposition that these claims involve an inventive step as a result of Feature D.”
I concur that claims 4–7 and 9 with the current appendencies do not overcome the findings of the earlier decision.
Claim 8 (previously claim 7)
The Opponent states in their submissions at paragraphs 72-74:
“This claim is ultimately dependent on independent claim 3.
This claim has been amended to:
(a) delete Feature D (which has been moved up into independent claim 3); and
(b) make a previously optional feature essential.
For the same reasons given in paragraphs 66–67 above, CCL accepts for the purposes of the final determination of this opposition that this claim involves an inventive step as a result of Feature D.”
I concur that amended claim 8 overcomes the findings in the first decision.
Inventive step summary
The amended claims 1, 2, 4-7, and 9 lack an inventive step in light of AU’467 and thus do not overcome the findings in the first decision. Claims 3 and 8 are inventive (and do not introduce any new deficiencies) and thus overcome the findings in the first decision.
Should the Applicant be given a further opportunity to amend?
The amendments were made on the basis of the Applicant’s belief that substituting white particles for metal flakes in the optically variable pigment in AU’467 would be non-obvious to a person skilled in the art. This validity of this proposition has not been decided in this decision. Instead, an aspect of AU’467 not considered in the first decision has been found to deprive the amendments of an inventive step. I consider that the Applicant has made a genuine attempt to overcome the findings in the first decision. Consequently, it is appropriate that the Applicant be given a further opportunity to amend the specification to overcome the findings in the first decision (while also taking into account the findings in this decision).
In the first decision I found that claim 7 was novel and inventive in light of AU’467. The features of claim 7 are now present (non-optionally) in claim 3 and 8. I note that if the Applicant takes the opportunity to file further amendments, then one of the options available to them would be to adopt the claims that contain the (non-optional) features that have been found to be valid. I note that this will likely be the last opportunity provided to overcome the deficiencies in the application.
Conclusion
The amendments do not overcome the issue of inventive step identified in the first decision.
The Applicant has two (2) months to propose suitable amendments.
Costs
Costs typically follow the event.
Although the opposition has deviated from the standard path of an opposition (the several rounds of amendments and the introduction of information under reg 5.23) I do not consider this to be sufficient cause to vary the costs from those set out in Schedule 8.
I award costs according to Schedule 8 against the Applicant.
Xavier Gisz
Delegate of the Commissioner of Patents