CCL Secure Pty Ltd v OVD Kinegram AG [2019] APO 53 - [2019] APO 53

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
CCL Secure Pty Ltd v OVD Kinegram AG [2019] APO 53
Patent Application: 2013310859

Title:Security element and security document

Patent Applicant: OVD Kinegram AG

Opponent:CCL Secure Pty Ltd

Delegate:Xavier Gisz

Decision Date: 28 November 2019

Hearing Date: 29 August 2019, in Canberra

Catchwords: PATENTS - section 59 opposition to grant of a patent – grounds of novelty, inventive step, support, full disclosure, clarity and utility – claims 1-3, 6-14, 19 and 20 lack novelty – claims 1-14, 19 and 20 lack inventive step – opposition to other grounds unsuccessful – costs awarded

Representation: Patent attorney for the applicant: Dr Mark Horsburgh and Dr David Tso of Spruson & Ferguson Intellectual Property
Patent attorney for the opponent: Ian Lindsay and Cici Cui of Allens Patent & Trade Mark

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2013310859

Title:Security element and security document

Patent Applicant: OVD Kinegram AG
Date of Decision: 28 November 2019
DECISION
Claims 1-3, 6-14, 19, and 20 lack novelty in light of US 2010/0315714.

Claims 1-14 and 19 and 20 lack an inventive step in light of US 2010/0315714.

The Applicant is given 2 months from the date of this decision to propose suitable amendments to overcome this finding.
Costs are awarded against the Applicant.
REASONS FOR DECISION

Background

The matter relates to patent application 2013310859 (the Application) in the name of OVD Kinegram AG (the Applicant). The Application is a national phase of international application PCT/EP2013/068193 published as WO2014/033324. The Application claims a priority date of 03 September 2012.
The Application was advertised as accepted on 31 August 2017. A notice of opposition to grant was filed on 30 November 2017 by CCL Secure Pty Ltd (the Opponent). The statement of grounds and particulars (the SGP) was filed on 28 February 2018.
The evidence in support was completed on 25 May 2018. The evidence in answer was completed on 27 August 2018. The evidence in reply was completed on 29 October 2018.
On 21 August 2018 the Applicant filed a request to amend the specification under section 104. The allowance of the amendment was not opposed and the amendment was subsequently allowed on 13 December 2018.
On 4 December 2018 the Applicant requested that the Commissioner consider information relevant to the hearing under Regulation 5.23. On 4 February 2019 the Delegate informed the parties that the information would be relied upon under regulation 5.23 and allowed the Opponent one month to provide responding information. No responding information was filed.
The opposition was heard in Canberra on 29 August 2019.
APPLICABLE LAW
The present opposition is governed by the Patents Act 1990 (the Act) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (the Raising the Bar Act) as the opposed application was filed after 15 April 2013. As a consequence the Commissioner may, under section 60(3A), refuse a patent application if satisfied on the balance of probabilities that a ground of opposition exists.
Evidence
Evidence in support
The evidence in support completed on 25 May 2018 comprises a declaration of Robert Arthur Lee (first Lee declaration) with Exhibits RAL-1 to RAL-12.
Evidence in answer
The evidence in answer completed on 27 August 2018 comprises a declaration of Karel Schell with Exhibits KS-1 to KS-6.
Evidence in reply
The evidence in reply completed on 29 October 2018 comprises a declaration of Robert Arthur Lee (second Lee declaration) with Exhibits RAL-13 and RAL-14.
Regulation 5.23 information
On 4 December 2018 the Applicant filed a declaration by Klaus Pforte with exhibit KP-1 and a declaration by David Tso with exhibits DT-1 to DT-6 which relates to the Captain Cook OVD of the bicentennial commemorative Australian $10 banknote in relation to working in transmission and reflection.
Grounds of Opposition
The grounds of opposition relied on by the Opponent are as follows: novelty, inventive step, full disclosure, support, clarity, and utility.
The invention
Diffraction gratings are a periodic structure having elements with one dimension close to the wavelength of light. Diffraction gratings have the interesting optical property of diffracting light such that it is split into its spectral components, typically having a rainbow effect. This diffraction effect is a type of optically variable effect because the colour varies as the object is viewed from different angles.
Diffraction gratings come in two types: reflective and transmissive. Reflective diffraction gratings diffract the incoming light which is reflected away from the surface, while transmissive diffractive gratings transmit light through the surface. I have illustrated reflection and transmission diffraction gratings below:
The claimed invention is a transmissive diffraction grating (although some of the dependent claims also include a reflection diffraction grating). More specifically, the device comprises two adjacent transmission diffractive structures that are visually distinct.
Claims
The specification ends with 1 independent claim and 19 dependent claims. Independent claim 1 is below:
A security element comprising
a first area that is transparent in transmitted light; and
a substrate comprising, in the first area, one or more transmissive diffraction structures which display one or more optical security features when observed in transmitted light;
wherein, in the first area, two or more different transmissive diffraction structures are arranged such that when observed in transmitted light against a light source radiating white light, display different color change effects when the security element is tilted and/or turned; and
wherein, when a first side of the security element facing an observer is observed in transmitted light, against a light source which radiates white light parallel to a beam axis and is arranged on the part of a second side of the security element opposite the first side of the security element, at least one of the two or more different transmissive diffraction structures brings about a change in the color of a partial area of the first area which is covered with at least one transmissive diffraction structure when the security element is tilted relative to the beam axis, wherein the partial area is molded to form a motif;
wherein the first area has one or more first zones which are covered with a first of the two or more transmissive diffraction structures, and has one or more second zones which are covered with a second of the two or more transmissive diffraction structures;
wherein the first and the second transmissive diffraction structures differ in the color spectrum of the transmitted light in a tilted and/or rotated state in a manner recognizable to a human observer.
Novelty legal principles
A claimed invention is deprived of novelty if it has been given to the public before the priority date, either by prior use of a product or process, or by publication of information that equates to the claimed invention (Justice Bennett in Danisco A/S v Novozymes A/S (No 2) [2011] FCA 282 at [248]; (2011) 91 IPR 209 at [248]). It is well established that the general test for anticipation is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20]; (1977) 137 CLR 228 at 235:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement.”
This test is satisfied if the alleged anticipation discloses all of the essential features of the invention as claimed (Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40 at [19]; (1990) 16 IPR 545 at 549). To meet this requirement, the prior art must contain “clear and unmistakable directions” to the claimed invention (Pfizer Overseas Pharmaceuticals v Eli Lilly and Co [2005] FCAFC 224 at [314]; (2006) 68 IPR 1 at 67 [314]). However, if the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee’s claim, but would be at least as likely to be carried out in such a way that would not do so, the patentee’s claim will not be anticipated (General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd (1971) 1A IPR 121 at 138). Where a prior publication does not explicitly disclose all of the integers of the claimed invention, it would still deprive the claimed invention of novelty if (i) the skilled reader understands the disclosures of the prior publication to include a missing integer, and (ii) if the document contains a direction to use a process that inevitably or inexorably results in something within the claim (Justice Bennett in Danisco (No 2) [2011] FCA 282 at [248]; (2011) 91 IPR 209 at [248]).
Novelty
The Opponent argues that the claimed invention lacks novelty in light of AU 681909, US 2010/0315714, WO 2001/002192, and AU 635255.
AU 681909 (RAL-6)
This document discloses a security document with diffractive structures. The invention is best understood with reference to figures 1-3:
The description states at page 12 lines 1 to 6:
“Figure l shows that the cover foil 5 is transparent only in a portion of the window-like. opening 4, namely the outer region 11, while provided in the inner region of the opening 4 is an additional security feature 12 which is based for example on optical effects, for example in the form of a diffraction structure which is operative in a transmission mode.”
I consider the security feature 12 is a first transmissive diffraction structure.
The description states at page 12 lines 13 to 18:
“In addition, as shown in Figure l, outside the region corresponding to the window-like opening the cover foil may be provided with at least one additional security feature 13 which is based for example on optical effects, which security feature 13 can also be of the most widely varying kinds and natures in dependence on the material of the cover foil, any coating thereon etc.”
The window-like opening 4 is made in a carrier 2 which is made of value-bearing paper 1. Although not explicitly stated, it is considered implicit that the value-bearing paper 1 is opaque or translucent and not transparent. Thus the additional security element 13 is located on an opaque or translucent (and not transparent) area.
The description states at page 14 lines 10 to 12:
“Another possible way of rendering the diffraction structures 20, 21 visible provides that a suitable dielectric, for example TiO₂ or TnS is applied in the region of the diffraction structures 20, 21.”
And at page 16:
“Instead of the metal layer it is also possible to apply a suitable dielectric, for example TiO₂ or TnS.”
The Opponent argued that this is a disclosure of second diffraction structure in a transparent area. More specifically, the Opponent argued that this is a disclosure of the second transmissive diffraction structure before being attached to the opaque or translucent carrier.
I am not satisfied that the optional feature of coating the diffraction structure with a dielectric layer is referring to the second diffraction structure that will be placed on the opaque or translucent carrier – there is no apparent purpose in making a transmissive diffractive structure that will be placed in a location where the transmissive diffractive effect cannot be viewed. Instead, this appears to provide detail about how to make the first transmissive diffractive structure.
I am not satisfied that this document provides a disclosure of two visually distinct transmissive diffractive structures. Consequently, the claims are novel in light of AU 681909.
WO 2001/002192 (RAL-8)
This document discloses a diffractive article including a diffractive optical filter.
The description states at page 3 line 21 to page 4 line 7 (with my emphasis in bold):
“According to the present invention, the transparent substrate 2 bears a diffractive optic filter 6. The diffractive optic filter may be incorporated into the surface of the substrate 2, or may be formed within a transfer foil structure that is later applied to the substrate 2. The diffractive optic filter comprises a first zone 7, and, in this example, at least a second zone 8. A diffractive structure is formed in each of the first and second zones 7 and 8. More specifically, each region incorporates a transmissive diffractive structure, such as a diffraction grating, formed as a microscopic 3-D relief pattern. The grating structures of both the first diffractive structure formed in the first zone 7 and the second diffractive structure formed in the second zone 8 have profiles and line spacings, or a periodicity, chosen so as to diffract at least a first spectral component of polychromatic light transmitted through the transmissive diffractive structure by a given angle 6. The characteristics of each of the diffractive structures in the two zones 7 and 8 are chosen so that different spectral components of the polychromatic light transmitted by each through the window in the banknote 1 are diffracted, so that the remaining undiffracted spectral component projected by each of the diffractive structures produces visually discernible colours which together form a projected security image.”
At page 5 lines 9 to 20 (with my emphasis in bold):
“In this example, the first diffractive structure fanned in the first zone 7 of the diffractive optic filter 5 acts to diffract the red and green spectral components of the polychromatic light transmitted through the substrate 2 of the banknote 1, and then through the first zone 7. The characteristics of the first diffractive structure are chosen such that the red and green spectral components are diverted by at least an angle θ similarly, the second diffractive structure formed in the second zone 8 of the diffractive optic filter 6 acts to diffract the green and blue spectral components of the polychromatic light emitted from the VDT screen 10 by at least the angle θ. Accordingly, only the blue spectral component of the light emitted from the VDT screen is transmitted to the user 11 through the first zone 7, whilst only the red spectral component of the polychromatic from the VDT screen 10 is transmitted by 20 the second zone 8 to the user 11.”
In the absence of expert evidence explaining the design of the diffraction structure that would operate in the way described, I have attempted to deduce its design. My understanding of how ‘192 functions is illustrated below:
In a typical transmission diffraction structure all spectral components of first order diffracted light are at a deflected angle to the input light while the zero order transmission travel straight through a transmission diffraction grating. Although it may be possible to make a transmission structure where one of the first order spectral components travels straight through the diffraction structure while the other spectral components and the zero order transmission are deflected, it is not clear how this could be done.
On one hand ‘192 has two visually distinct transmission diffraction structures, thus ostensibly disclosing all the features of the claimed invention. On the other hand, I am unable to understand how the transmission diffraction structures in ‘192 actually work and thus I do not consider the ‘192 document provides an enabling disclosure.
In the absence of an enabling disclosure I cannot be satisfied that ‘192 provides clear and unmistakable disclosure of the claimed invention. Claim 1 is considered novel in light of this document.
AU 635255 (RAL-5)
This document discloses optically variable surface patterns. Figures 1 and 2 show:
The description states at page 2 lines 15 to 27:
“According to the present invention there is provided an article of manufacture including an optical surface pattern embossed into a support for making visible one out of a plurality of N image representations for each one out of N(N>1) predetermined viewing directions and thereby·create an optically varying surface pattern, said optically varying surface pattern comprising M(M>1) grid elements, each of said grid elements being divided into N grid element sub-portions, each of said N grid element sub-portions of each of said grid elements corresponding to a pixel of one of·said N image representations and containing·a diffraction element in the form of a relief structure with predetermined parameters for diffracting incident light, so that one of said N representations is visible from each one of said N predetermined viewing directions.”
The invention is predominantly about reflective diffractive structures, but includes a brief description of transmissive diffractive structures at page 4 lines 29 to 33:
“The surface pattern can be viewed in transmission if the protective layer 11 and the support 4 are made of optically transparent materials with different indices of refraction. The jump in refractive index at the boundary between the- protective layer 11 and the support 4 acts as an optically active intermediate layer.”
At page 8 lines 4 to 9 (with my emphasis in bold):
“Since each one of the N different image representations 3 has at least one attributed viewing direction 15, a viewer of the surface pattern sees only one of the N representations 3 under non-diffuse illumination and in one of the N viewing directions 15. By tilting or rotating the support 4, all N representations 3 become visible one after the other to the viewer.”
The description states at page 6 lines 35 to 37:
“With appropriately shaped asymmetric profiles on the other hand, each of the N representations 3 is visible only from one single viewing direction.”
One embodiment of the invention is given at page 8 lines 30 to 36:
“The N image representations 3 can be different perspectives of one and the same object, it being possible, for example, for the direction of viewing of a particular view of the object to coincide with the N viewing directions 15. By changing the viewing direction 15, for example by rotating the surface pattern or by moving one’s head, it is possible to obtain a suddenly different view of the object in the corresponding viewing direction 15, in contrast to a hologram.”
The orientation of the light is an important aspect of the invention. At page 6 lines 8 to 13:
“The direction of the incident light 10 falling upon the surface pattern (see Figure 2) and a viewing direction 15 (see Figure 1) provided for the image representation 3, which is related to the orientation direction 14 and the colour value of the pixel, determine the important parameters of the relief structure 9 of the diffraction element 8 assigned to the pixel concerned.”
It is not stated what light the device is to be viewed in; there are two possibilities: monochromatic light or polychromatic light. When viewed in monochromatic light it is readily apparent how the different representations would be visible “one after the other to the viewer” and “visible only from one single viewing direction”. When viewed in polychromatic light each pixel would appear as a rainbow as it is tilted and thus not allow the pixels to be visible “one after the other to the viewer”.
Although viewing in monochromatic light allows the different representations to the visible “one after the other to the viewer”, this is difficult to reconcile with the disclosure that the “colour value” of each pixel is selected since this implies the pixels are viewed in polychromatic light.
This difficulty to reconcile what light the device is to be viewed in leads me to conclude that there is no clear and unmistakable disclosure of the device with two visually distinct transmissive diffractive structures being viewable in white light. Consequently the claims are novel in light of AU 635255.
US 2010/0315714 (RAL-7)

This document discloses a film element with an optically active surface structure. A cross-section of the device is shown in figure 3:
Although this document is predominantly about reflective diffraction structures it also discloses transmissive diffractive structures at paragraph 66:
“In addition it is also possible for an HRI material to be further applied region-wise to the replication layer, for example in a patterned configuration, by a printing method. It is also possible for the surface structure 27 to be designed for viewing in the trans illumination mode and thus for a window-shaped opening to be provided in the substrate 10 at least in the region 3 or for the substrate 10 to be transparent in that region.”
Mr Schell states at paragraph 4.8:
“From my review of RAL-7, I note that RAL-7 (paragraph 66) briefly mentions transillumination. However, in my opinion, the reference to transillumination is mentioned with respect to the window in the substrate rather than the gratings.”
Mr Schell states at paragraph 5.24:
“I am of the opinion that the structures of RAL-7 are designed to be viewed in incident light as stated in claim 1 of RAL-7. As mentioned hereinabove, transillumination is briefly discussed in respect to the window in the substrate. I am of the opinion that this brief mention of transillumination does not imply that the diffraction structure is a transmissive diffraction structure that acts as a light valve.”
Mr Lee states in his second declaration at paragraph 33:
“For the reasons discussed above, I disagree with the statements made in paragraph 5.24 of Schell. It is clear that US'714 describes transmissive diffraction structures and nothing in paragraph 5.24 alters my views as to the disclosure of US'714 expressed in my First Declaration.”
To resolve these conflicting statements from the experts, I have looked at other parts of the disclosure of ‘714. Paragraph 77 supports the view that the diffraction structures are transmissive. The second half of paragraph 77 states (with my emphasis in bold):
“The reflection layer 44 is a thin metallic layer, for example of aluminum, silver, gold, copper or an alloy of those metals. It is also possible that, instead of the reflection layer 44, an optical separation layer, for example an HRI layer, in particular an inorganic HRI layer (HRI-high refraction index) is applied to the replication layer 43, which is of a thickness which in a first embodiment is less than the first and/or second optical spacing and in a second embodiment is thicker than the first and/or [second] sic optical spacing or corresponds thereto. In addition it is also possible that the reflection layer 44 comprises an HRI layer and a metallic layer, wherein preferably the replication layer 43 is firstly coated with the HRI layer and then the metal layer is applied to the HRI layer.”
Although these parts of the description do not explicitly state that the embodiment using the HRI layer is a transmissive diffraction structure, I consider this to be inherent since the purpose of HRI layers in diffraction structures is to improve the transmission diffractive effect (for example, see page 32 lines 14 to 19 of the presently opposed application).
Embodiment 1
This document discloses at paragraph 67:
“The region 3 is subdivided into a plurality of regions 31, 32, 33 and 34 in which the surface structure 27 is respectively formed by a different surface relief. Thus that gives the optical appearance shown in FIG. 4 for example for the human viewer, when viewing the region 3. Thus the region 31 is shaped for example in the form of a tree 31 and covered with a first surface relief implementing a holographic representation of a tree in a green color. The region 32 is shaped in the form of a background to the region 31 and completely encloses the region 31. In the region 32 the surface structure 27 is formed by a second surface relief which generates a holographically acting background to the holographic representation afforded by the region 31, more specifically in a color contrasting with the region 31, for example in a blue color. The regions 33 are shaped in the form of symbols, here in the form of the digits "100". In the regions 33 the surface structure 27 is formed by a third surface relief which causes the regions 33 to appear achromatically white from a central viewing position. The regions 34 respectively enclose the regions 33 and respectively form an edge region in relation to the regions 33. In the regions 34 the surface structure 27 is formed by a fourth surface relief which appears in rainbow colors from a central viewing position and upon rotation of the security element 2 simulates a substantially achromatic motion effect, by which the digits "100" appear to widen and contract again upon rotation.”
Figure 4 is shown below:
The Opponent argued that region 34 has a colour spectrum when tilted or rotated (last sentence of paragraph 67), while it would be inherent that each of regions 31, 32 and 33 would differ in colour spectrum when tilted or rotated. The Applicant argued that it would not be inherent for regions 31, 32 and 33 to differ in colour spectrum when tilted or rotated.
I agree with the Opponent that it is inherent that each of regions 31, 32 and 33 would differ in colour spectrum when tilted or rotated, since this is how diffraction gratings work. Thus embodiment 1 discloses all the features of claim 1 (i.e. two visually distinct diffraction structures), except the feature of the diffractive structures being transmissive diffractive structures.
Embodiment 2
This embodiment discloses reflective diffraction structure at paragraph 83:
“When viewing from a standard viewing position (FIG. 6a) the region 52 appears in a red color and the region 51 in green. When the film element is rotated through 180° (FIG. 6b) the region 52 appears in a green color to the human viewer and the region 51 appears red.”
Figure 6a and 6b show:
I am satisfied that Embodiment 2 discloses all the features of claim 1 (i.e. two visually distinct diffraction structures), except the feature of the diffractive structures being transmissive diffractive structures.
Can these two aspects of the document be combined and understood as a single disclosure?
The Opponent argued that if either embodiment 1 or 2 were made with transmissive diffraction structures, as disclosed earlier in the document, then this would have all the features of the claim.
The Applicant argued that different aspects of the disclosure cannot be read together as a single disclosure. The Applicant further argued that if the transmissive diffraction grating were substituted for the reflective diffraction gratings, then it is not inherent that there would be a visible change of colour when tilted or rotated.
The disclosure provides several ways for the diffractive structure to be constructed (reflective and transmissive diffractive structures) and provides several patterns as examples (embodiments 1 and 2). It is unnecessary for each diffractive structure (reflective and transmissive diffractive structures) to be described individually with each pattern. The evidence suggests that a person skilled in the art would understand that the various diffractive structures can be read together with any of the various examples (see, for example, Mr Lee at paragraph 68 of his declaration).
I am satisfied that each of embodiment 1 and embodiment 2 can be read together with the transparent diffraction grating disclosures in paragraphs 66 and 77.
Would there be a visible change of colour of transmissive diffractive structure when tilted?
During the hearing I asked the parties if a diffractive structure (that produce one colour at one angle) necessarily produces different colour when tilted. Both parties agreed that, to some extent, all simple diffractive structures that produce one colour at one angle necessarily produce different colours when tilted.
The Opponent noted that there is a phenomenon known as ‘structural colour’ which is a diffractive effect formed by complex diffractive structures where a limited range of colours (or single colour) is produced in ambient light. This is seen in peacock feathers and some types of butterfly wings.
I consider that the disclosure of ‘714 (RAL-7) is to simple diffractive structures, and not a complex diffraction structure (such as ‘structural colour’). Consequently, I am satisfied that it is inherent in ‘714 (RAL-7) that where it is not already explicit (such as embodiment 2) the transmission diffractive structures (e.g. embodiment 1) would have different colours at different angles.
Conclusion on the novelty of claim 1 in light of ‘714
‘714 discloses two visually distinct diffraction structures. The structures change colour when viewed in white light. The diffraction structures are transmissive diffraction structures. Thus all the features defined in claim 1 are disclosed in ‘714. Consequently claim 1 lacks novelty in light of ‘714.
Novelty of dependent claims
Claim 2
Claim 2 states:
The security element according to claim 1, wherein the two or more transmissive diffraction structures are designed such that, when observed in transmitted light against a light source radiating white light directionally, the partial areas, of the first area, covered with the two or more transmissive diffraction structures in each case display, as optical security feature, a color-change effect that is recognizable to the human observer, when the security element is tilted.
Claim 2 makes explicit that both of the diffraction gratings cause a color-change effect when the device is tilted. I have found that ‘714 discloses diffraction gratings that have color-change effect when the device is tilted. I consider that claim 2 lacks novelty in light of ‘714.
Claim 3
Claim 3 states:
The security element according to claim 1, wherein the at least one transmissive diffraction structure is formed such that the light incident on the second side of the security element in a beam direction perpendicular to the plane spanned by the second side of the security element is transmitted in the direction of the beam direction through the substrate largely unchanged in its color spectrum, wherein here the change of the spectrum in the range of from 460 nm to 660 nm is less than 15%, or less than 10%, or less than 5%.
Claim 3 defines that the white light travelling straight through the transmission diffraction gratings is substantially uniformly transmitted in the range of 460nm to 660nm.
Mr Lee states in his first declaration at paragraph 73:
“As noted above, in some embodiments described in US'714 the security component includes subregions which appear achromatically white or colourless. I therefore consider that US'714 describes a security element as defined in claim 3.”
I note that this embodiment referred to by Mr Lee is a reflective rather than a transmissive diffraction grating and so the relevance to the present claim is limited.
The zeroth order transmission of a simple transmission diffraction grating is, as far as I understand, typically uniform (i.e. the variation or change of spectrum is typically less than 15%).
The only simple way I can envisage where the diffraction grating of ‘714 does not uniformly transmit light in the range of 460nm to 660nm is if the diffraction grating was made on a coloured substrate. For example, if the substrate was transparent only to red light, then the white light would not be uniformly transmitted in the range of 460nm to 660nm. However, using such a coloured substrate would not allow the invention to provide the alternating colour effect in paragraph 83.
Consequently I consider it inherent that the transmission diffraction grating of ‘714 would pass light (zeroth order) straight through the diffraction grating in a substantially uniform manner (less than 15% variation). Claim 3 lacks novelty in light of ‘714.
Claim 4
Claim 4 states:
The security element according to claim 3, wherein the transmissivity of the at least one transmissive diffraction structure and/or of the security element in the beam direction is greater than 70%, or greater than 50%, or greater than 30%.
Claim 4 relates to the amount of transmissivity of the diffraction structures in the beam direction, i.e. the zeroth order diffraction.
The Opponent states:
“Claim 4 requires that the transmissivity of the at least one transmissive diffraction structure and/or of the security element in the beam direction is greater than 30%. Lee provides evidence that the transmissivity of a diffraction grating is a routine design parameter and it would be a matter of routine to design the security element of US714 to have a zero-order transmissivity of greater than 30%, which is a relatively low transmissivity requirement (Lee 1 [75]). Accordingly, claim 1 is obvious in light of common general knowledge and US714.”
‘714 is silent as to the amount of zeroth order transmissive diffraction. It is plausible that the zeroth order diffraction in ‘714 is less than 30%. Therefore, the feature of greater than 30% transmission is not considered inherent. Claim 4 is considered novel.
Claim 5
Claim 5 states:
The security element according to any one of claims 1 to 4, wherein the at least one transmissive diffraction structure transmits the light incident on the second side in a beam direction with an angular offset of from 10° to 70°, or from 20° to 60°, relative to the surface normal of the plane spanned by the second side of the security element changed in its color spectrum in the direction perpendicular to the surface normal of the plane spanned by the second side of the security element or in the beam direction.
The Opponent states in their submissions:
“Claim 5 requires that transmissive diffraction structures transmit the light incident on the second side with an angular offset of from 10° to 70° relative to the surface normal and is "changed in its color spectrum" compared with in the zeroth-order (perpendicular to the surface normal). Of course, the angular offset for transmissive diffractive structures is given by the grating equation and, where it is intended for a user to see such diffracted effects, the relevant diffraction angle must be between 10° and 70°, otherwise the user would be viewing the device at an extreme angle. Lee views the features recited in claim 5 as routine and covered in his comments with respect to claim 1 (Lee 1 [0076]). Optical Document Security (RAL-14, pg 179), being part of the common general knowledge, also discloses that the "typical" diffraction angle is about 45°. Accordingly, claim 5 is obvious in light of common general knowledge and AU909, US714 and WO192.”
It is plausible that a transmission grating of ‘714 could have a first order diffraction angle outside this range. For example, it is plausible that the first order diffraction would be between 1° and 10°. Thus this feature is not considered inherent. Claim 5 is considered novel.
Claim 6
Claim 6 states:
The security element according to any one of the previous claims, wherein at least one property of the first and second transmissive diffraction structures or the first and second zones is selected from:
the first transmissive diffraction structure differs from the second transmissive diffraction structure;
the first and second transmissive diffraction structures differ in their relief depth, their azimuth angle and/or their grating period;
the first and second transmissive diffraction structures are formed of different types of transmissive diffraction structures;
neighboring first and second zones are spaced apart from each other by less than 10 μm, or less than 2000 nm; wherein at least one property of the first and second zones is selected from:
the first and second zones in each case have lateral dimensions of more than 300 μm, or have a width and a length of, in each case, more than 500 μm; and
the one or more first and second zones are molded to form a motif, wherein the first zones form a foreground area of the motif and the second zones form a background area of the motif, or in that the one or more first zones are molded to form a first motif and the one or more second zones are molded to form a second motif.
This claim contains a list of alternatives; the prior art need only disclose one of these features to deprive the claim of novelty. The first of these alternatives is “the first transmissive diffraction structure differs from the second transmissive diffraction structure”. The appearance of the diffractive structures differs between the zones in ‘714. Therefore, diffractive structures must differ in some way. Claim 6 lacks novelty in light of ‘714.
Claim 7
Claim 7 states:
The security element according to claim 6, wherein the one or more first zones and the one or more second zones in each case have at least one lateral dimension of less than 300 μm, or less than 150 μm, or less than 80 μm.
Lee states at paragraph 78:
“In the embodiment of US'714 described by reference to Figure 11, it is said that the domains 72 in which the various diffraction structures are formed are 100 μm x 100 μm.”
Figure 11 of ‘714 is reproduced below:
The corresponding description states at paragraph 97:
“FIG. 11 shows a region 71 of a film element 7. The region 71 is subdivided into a plurality of domains 72. The domains 72 are each preferably of the same dimensions. At least in one direction the dimension of the domains 72 is less than 300 µm. In the embodiment shown in FIG. 11 the domains 72 are of a dimension of less than 300 µm both in the longitudinal direction and also in the transverse direction, while in the FIG. 11 embodiment they are of a dimension of 100x100 µm.”
I consider that the diffraction structure pixels disclosed in ‘714 at figure 11 fall within the scope of claim 7. Claim 7 lacks novelty in light of ‘714.
Claim 8
Claim 8 states:
The security element according to any one of claims 6 to 7, wherein in the first area a plurality of third zones which are covered with a third one of the transmissive diffraction structures, and/or a plurality of fourth zones which are covered with a fourth one of the transmissive diffraction structures are provided, wherein the first, second, third and fourth transmissive diffraction structures in each case mutually differ from each other and the third and fourth zones respectively in each case have at least one lateral dimension of less than 300 μm, or less than 150 μm, or less than 80 μm.
Mr Lee states in his first declaration at 79:
“In the embodiment of US'714 described by reference to Figure 11, there are four different types of diffraction structure which can be arranged in the domains 72 in a variety of different ways.”
I consider that figure 11 of ‘714 discloses four diffractive structures. Claim 8 lacks novelty in light of ‘714.
Claim 9
Claim 9 states:
The security element according to claim 7 or 8, wherein the first area has a motif area which is divided into a plurality of image point areas, in that in at least a first of the image point areas at least two different zones selected from the group first and second zones, the group first, second and third zones, or the group first, second, third and fourth zones are arranged and in that the color appearing in the first image point area when observed in transmitted light at least at one tilt angle is generated by additive color mixing of the colors generated at this tilt angle by those of the transmissive diffraction structures arranged in this image point area in the different zones.
Mr Lee states in his first declaration at paragraph 80:
“In the embodiment of US'714 described by reference to Figure 11, the colour value and brightness of each domain 72 is determined by the presence and size of the four different types of diffraction structure arranged within it. For the reasons discussed above, I consider that US'714 describes a security element as defined in claim 9.”
I consider that the four diffraction structure pixels disclosed in figure 11 of ‘714 are sized such that the colours would blend through additive colour mixing. Claim 9 lacks novelty in light of ‘714.
Claim 10

Claims 10 states:
The security element according to any one of the previous claims, wherein the substrate has, in the first area, one or more reflective diffraction structures which display one or more optical security features when observed in reflected light.
The last sentence of paragraph 77 of ‘714 states:
“In addition it is also possible that the reflection layer 44 comprises an HRI layer and a metallic layer, wherein preferably the replication layer 43 is firstly coated with the HRI layer and then the metal layer is applied to the HRI layer.”
Paragraph 78 of ‘714 states:
“Both the reflection layer 44 and also the optical separation layer can in that case be applied partially and in patterned form to the replication layer 43. That provides for example that the light in different regions passes through a medium with a differing reflective index and thus the optical spacing which is dependent on the refractive index differs in region-wise manner.”
I consider this to be a disclosure of adjacent transmission and reflection diffraction structures. Claim 10 lacks novelty.
Claim 11
Claim 11 states:
The security element according to claim 10, wherein a plurality of first partial areas which are covered with one of the two or more transmissive diffraction structures and a plurality of second partial areas which are covered with another one of the two or more reflective diffraction structures are provided in the first area, in that the first and second partial areas in each case have at least one lateral dimension of less than 300 μm, or less than 150 μm, or less than 80 μm, and in that, at least in areas, the first and second partial areas are assigned next to each other, with the result that in the first area a first item of optical information determined by the first partial areas appears in transmitted light and a second item of optical information determined by the second partial areas appears in reflected light.
‘714 discloses adjacent transmission and reflection diffraction structures in paragraph 78, and interlaced diffractive structures at figure 12 and paragraphs 103 and 104. I am satisfied that these embodiments can be read as a single disclosure. Claim 11 lacks novelty.
Claim 12
Claim 12 states:
The security element according to any one of the previous claims, wherein one or more of the two or more transmissive diffraction structures in each case are formed of a relief structure molded in a surface of the substrate, which are molded in the surface of the first side of the security element.
Mr Lee states in his first declaration at paragraph 83:
“US'714 describes the formation of the optically active surface structure in a replication layer by heated embossing.”
I am satisfied that ‘714 discloses the transmissive diffractive structure to be formed by a molding process in the first side (for example at paragraph 65). Claim 12 lacks novelty in light of ‘714.
Claims 13 and 14
Claims 13 and 14 state:
13. The security element according to any one of the previous claims, wherein one or more of the two or more transmissive diffraction structures in each case are formed of a relief structure molded between two transparent layers of the substrate, wherein the refractive index of these layers differs by at least 0.1, wherein at least one property of the two transparent layers is selected from:
one of the two transparent layers is a replication layer and the other of the two transparent layers is a porous layer, wherein the pores of the porous layer are filled with air, wherein the porous layer has a thickness of between 2 and 50 μm, or between 2 and 20 μm; and
one of the two transparent layers is a replication layer and the other of the two transparent layers is an HRI layer, which has a layer thickness between 50 and 300 nm, or between 75 and 150 nm, or between 75 and 125 nm.
14. The security element according to claim 13, wherein at least one property of the relief structure is selected from:
the relief depth of the relief structure is more than 200 nm, or more than 300 nm, or more than 400 nm and the relief depth of the relief structure is smaller than 1200 nm, or smaller than 1000 nm;
the relief structure is a grating defined by the parameters relief shape, relief depth, grating period and azimuth angle and the relief depth is between 990 and 1700 nm, or between 1200 nm and 1500 nm, and the grating period is between 500 nm and 1500 nm, or between 600 nm and 1200 nm;
the relief structure has an asymmetrical relief shape; and
the light transmitted perpendicularly through the relief structure in the zero order in the wavelength range of from 460 nm to 660 nm is largely not changed in its color spectrum and the transmittance of the light transmitted in the zero order is greater than 30%, or greater than 50%.
‘714 discloses a high refractive index layer applied to the replication layer. I consider it inherent that the HRI layer has a refractive index at least 0.1 greater than the refractive index of the replication layer, since the word ‘high’ implies significantly greater than typical polymer layers.
The thickness of the replication layer is given at paragraph 77 as being less than the ‘optical spacing’. The optical spacing is given as between 150nm and 800nm (paragraph 6). Thus the thickness of the HRI layer is disclosed to be within the claimed range. Claim 13 lacks novelty.
‘714 discloses an asymmetrical relief profile (paragraph 11). Claim 14 lacks novelty.
Claims 15-18
Claims 15 – 18 state:
15. The security element according to any one of the previous claims, wherein one or more of the two or more transmissive diffraction structures in each case is formed of a plurality of elements, wherein the elements in each case have at least one element surface arranged substantially parallel to a base plane, the elements are arranged offset relative to each other in relation to at least one first direction running parallel to the base plane and elements neighboring the element surfaces are spaced apart in a direction perpendicular to the base plane according to a variation function dependent on the at least one first direction, by a first distance or a multiple of the first distance, wherein the variation function is a periodic function and in each period of the variation function the element surfaces of at least two elements following on from each other in the at least one first direction are spaced apart from each other by the first distance.
16. The security element according to claim 15, wherein the period is greater than 3 μm, or greater than 4 μm, in that each period comprises 3 to 10, or 3 to 6 successive elements, and in that the first distance is between 50 and 1000 nm, or between 100 and 500 nm.
17. The security element according to any one of claims 15 to 16, wherein the substrate has a transparent layer in which the elements are embedded and the elements are formed of a material which differs from the material of the transparent layer, or differs in its refractive index by more than 0.1.
18. The security element according to any one of claims 15 to 17, wherein the elements are formed of partial areas of a layer of the substrate and the element surfaces form at least one partial area of a surface of this layer and define a surface relief molded in this layer, wherein at least one property of the relief structure is selected from:
the relief structure is a zero-order diffraction grating defined by the parameters relief shape, relief depth, grating period and azimuth angle, the relief depth is between 300 nm and 500 nm, or between 350 nm and 500 nm, and the grating period is between 250 and 700 nm, or between 350 and 600 nm; and
the relief structure is molded between a transparent layer and an HRI layer and the thickness of the HRI layer is between 70 and 250 nm, or between 130 and 220 nm.
Claim 15 defines diffractive structures formed by a plurality of elements, wherein the elements are offset or spaced apart in both the horizontal and perpendicular directions in a periodic manner. This corresponds to the embodiment in Figure 8b:
Mr Lee states in his first declaration at paragraph 86:
“Claim 15 of AU'859 defines the security element of claims 1 to 14 in which one or more of the one or more transmissive diffraction structures in each case is formed of a plurality of elements, wherein the elements in each case have at least one element surface arranged substantially parallel to a base plane, the elements are arranged offset relative to each other in relation to at least one first direction running parallel to the base plane and elements neighboring the element surfaces are spaced apart in a direction perpendicular to the base plane according to a variation function dependent on the at least one first direction, by a first distance or a multiple of the first distance, wherein the variation function is a periodic function and in each period of the variation function the element surfaces of at least two elements following on from each other in the at least one first direction are spaced apart from each other by the first distance. US'714 describes by reference to Figure 3, an optically active surface structure formed from a plurality of successive surface elements which are spaced apart from each other so as to follow a periodic envelope curve, in which the surface elements are oriented parallel to the base surface of the structure and each other. For the reasons discussed above, I consider US'714 describes a security element as defined in claim 15.”
I do not accept Mr Lee’s interpretation of the claim that the ‘plurality of elements’ with surfaces ‘spaced apart’ could include a continuous surface. Instead, I consider this claim defines a plurality of discrete non-touching elements.
Figure 3 of ‘714 is shown below:
The embodiment in US’714 in Figure 3 is a stepped reflective structure and does not disclose a plurality of discrete elements. Claim 15 and the claims dependent thereon (claims 16-18) are considered novel in light of ‘714.
Claims 19 and 20
Claims 19 and 20 state:
19. The security element according to any one of the previous claims, wherein
at least one property of the security element is selected from:
the security element has one or more opaque second areas; and
the security element is a laminating film, a transfer layer of a transfer film,
a security thread or a multi-layer body in card form.
20. A security document comprising a security element according to any one of the previous claims.
‘714 discloses that the device is used in window in a bank note in figure 1. I consider the part of the bank note that surrounds the window to be an opaque second area. Claims 19 and 20 lack novelty in light of ‘714.
Conclusion on novelty
Claims 1-3, 6-14, 19, and 20 lack novelty in light of US 2010/0315714.
Inventive step legal principles
It is a requirement of subsection 18(1) of the Act that the 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).
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.
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) 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."
Inventive step
The Opponent argues that the claimed invention lacks an inventive step in light of AU 681909, US 2010/0315714, WO 2001/002192, and AU 635255.
AU 681909 (RAL-6)
I have found in the novelty analysis that AU 681909 (RAL-6) did not disclose two visually distinct transmissive diffractive structures.
There is no evidence (nor can I see clear reason) why a person skilled in the art would, as a matter of routine, modify the invention disclosed in this document such that they would add a second visually distinct transmissive diffractive structure.
I am not satisfied that a person skilled in the art would make such a modification, and thus claim 1 is considered inventive in light of AU 681909 (RAL-6).
WO 2001/002192 (RAL-8)
I have found in the novelty analysis that WO 2001/002192 (RAL-8) does not provide an enabling disclosure of two visually distinct transmissive diffractive structures. There is no evidence relating to how a person skilled in the art would, as a matter of routine, modify this document such that it would provide an enabling disclosure, nor is it clear to me how this could be done. Thus claim 1 is considered inventive in light of WO 2001/002192 (RAL-8).
AU 635255 (RAL-5)
I have found in the novelty analysis that AU 635255 (RAL-5) did not disclose two visually distinct transmissive diffractive structures to be viewed in white light.
I consider that AU 635255 (RAL-5) would work when illuminated by monochromatic light. If AU 635255 (RAL-5) were to be viewed in white light it is plausible that the different image representations would blur together such that there was not two visually distinct transmissive diffractive structure areas, instead forming a continuum of coloured pixels.
There is no evidence relating to how or why a person skilled in the art would, as a matter of routine, modify this document such that two visually distinct transmissive diffractive structure areas could be viewed in white light, nor is it clear to me how this could be done. Thus claim 1 is considered inventive in light of AU 635255 (RAL-5).
US 2010/0315714 (RAL-7)
Claims 1-3, 6-14, 19, and 20 lack novelty in light of ‘714. I consider these claims to also lack inventive step. Whether an inventive step exists in the other dependent claims is considered below.
Claim 4
In the novelty analysis I found that it is plausible that the zeroth order diffraction in ‘714 is less than 30%.
Mr Lee states at paragraph 75:
“Claim 4 of AU'859 defines the security element of claim 1 in which the transmissivity of the at least one transmissive diffraction structure and/or of the security element in the beam direction is greater than 70%, or greater than 50%, or greater than 30%. For the purposes of the following discussion, I have assumed that claim 4 includes a security element wherein the transmissivity is greater than 30% and that the additional reference to "greater than 70%, or greater than 50%" does not alter this. The transmissivity of a diffraction structure is a design parameter which can be adjusted depending on the desired visual appearance of the diffractive structure. I consider that it would be a matter of routine to design the security elements described in US'714 to have a zero-order transmissivity of greater than 30%.”
I accept Mr Lee’s assertion that a person skilled in the art would as a matter of routine modify ‘714 such that the zeroth order transmissitivity greater than 30%. Consequently claim 4 lacks an inventive step.
Claim 5
In the novelty analysis I found that it was plausible that the transmission grating of ‘714 could have a first order diffraction angle outside the range of 10° to 70°. I am satisfied that the typical (first order) diffraction angle of a diffraction grating is about 45° (as stated in the book “Optical Document Security” (RAL-14) at page 179), and so a person skilled in the art would, as a matter of routine, modify ‘714 such that the first order diffraction angle would fall within the range of 10° to 70°. Consequently claim 5 lacks an inventive step.
Claims 15-18
I found in the novelty analysis that claim 15 defines a plurality of discrete elements. I can see no motivation for a person skilled in the art to modify ‘714 such that the profile was modified from the continuous stepped profile into discrete elements. Consequently, I consider claims 15-18 to be inventive.
Inventive step conclusion
Claims 1-14 and 19 and 20 lack inventive step in light of US 2010/0315714 (RAL-7).
Utility legal principles
Section 7A of the Patents Act 1990 (Cth) requires that the invention (so far as claimed) is useful. In Ranbaxy Australia Pty Ltd v Warner-LambertCoLLC [2008] FCAFC 82 at [141] it was stated that "the invention as claimed must attain the result promised by the patentee".
In Streetworx Pty Ltd v Artcraft Urban Group Pty Ltd [2014] FCA 1366 at [340], Beach J proposed a three-question test when considering utility:
i. What has the patentee promised for the invention as described in the relevant claim?
ii. Is the promise useful?
iii. Has that promise been met?
It was also established by the Full Federal Court in H LundbeckAJS v Alphapharm Pty Ltd [2009] FCAFC 70 that:
“A claim is bad if it covers means that will not produce the desired result, even if a skilled person would know which means to avoid. That is to say, everything that is within the scope of a claim must be useful, otherwise the claim will fail for inutility.”
Utility
The Opponent states in their submissions:
“Claim 3 of the Application defines a transmissive diffraction structure formed such that "the light incident on the second side of the security element in a beam direction perpendicular to the plane spanned by the second side of the security element is transmitted in the direction of the beam direction through the substrate". This is "zero-order transmission" (pg 33, ln 1-3). Claim 3 goes on to require that the transmitted light is "largely unchanged in its color spectrum, wherein here the change of the spectrum in the range of from 460 nm to 660 nm is less than 15%, or less than 10%, or less than 5%", with no further limiting features.”
“The Application states that, in order to achieve the effect of a transmissive zero-order diffraction structure the relief depth, grating period and thickness of the highly refractive waveguide layer have to be chosen (pg 32, ln 14-19) and, moreover, "that in tilted observation a transmission minimum with T < 20% can only be achieved from a thickness of the highly refractive transparent waveguide layer of more than 130 nm" and that this "transmission minimum is essential in order to produce a color impression that is clearly perceptible to the human eye" (pg 33, ln 6-18, emphasis added).”
Page 33 lines 6 to 17 states:
“From such investigations it has been revealed that in tilted observation a transmission minimum with T < 20% can only be achieved from a thickness of the highly refractive transparent waveguide layer of more than 130 nm. This transmission minimum is essential in order to produce a color impression that is clearly perceptible to the human eye. Further, these investigations have shown that the transmission in perpendicular illumination and observation is uniform and even up to a thickness of the highly refractive, transparent waveguide layer of 250 nm is clearly over 25%. This makes an appearance that is undistorted in terms of color, i.e. color-neutral, possible in transmission at this angle. The investigations have thus revealed that the thickness of the highly refractive transparent waveguide layer is preferably to be chosen to be in the range of from 70 nm to 250 nm, further preferably in the range of from 130 nm to 220 nm.”

I am willing to accept the Opponent’s contention that a particularly effective diffractive transmission (i.e. when the transmission minimum less than 20% at tilted observation) might only be achievable with a highly refractive transparent waveguide layer of more than 130nm. However, the invention defined in the claims is not limited to particularly effective transmission diffraction gratings, and also include any diffraction gratings wherein the different colours in the different zones is merely visible.
In regard to claim 3, the Opponent argued at the hearing that to achieve the largely unchanged colour spectrum in the zeroth diffraction order the highly refractive transparent waveguide layer was necessary. The Opponent pointed to Figure 6a of the opposed specification:
At the hearing the Applicant noted that Figure 6a was originally made as a colour graph that had been converted to a black and white image in the process of filing the specification. Although not ideal, I am satisfied that pertinent information can be extracted from this figure.
In my opinion, Figure 6a shows that in the claimed range of 460nm to 660nm, there is a reasonably uniform amount of light transmitted in the beam direction regardless of thickness of the ZnS layer. Indeed, even at 0 thickness the transmission of light appears uniform across the range of wavelengths. Thus the Opponent’s argument that the high refractive index layer (e.g. ZnS layer) is needed to meet the promise of the invention of claim 3 cannot be sustained. I consider the claimed invention to meet the requirement of utility.
Full description legal principles
Section 40(2)(a) states:
(2)A complete specification must:
(a) disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art;
In order to comply with sec 40(2)(a), the complete specification must provide sufficient information to enable the skilled person to perform the invention over the whole width of the claims, without undue burden or the need for further invention. (The Explanatory Memorandum and Biogen Inc. v Medeva PLC [1997] RPC 1 at 48).
Full description
The Opponent states at paragraphs 125-127 of their submissions:
“Claim 3 of the Application defines a transmissive diffraction structure formed such that "the light incident on the second side of the security element in a beam direction perpendicular to the plane spanned by the second side of the security element is transmitted in the direction of the beam direction through the substrate". This is "zero-order transmission" (pg 33, ln 1-3). Claim 3 goes on to require that the transmitted light is "largely unchanged in its color spectrum, wherein here the change of the spectrum in the range of from 460 nm to 660 nm is less than 15%, or less than 10%, or less than 5%", with no further limiting features.
The Application states that, in order to achieve the effect of a transmissive zero-order diffraction structure the relief depth, grating period and thickness of the highly refractive waveguide layer have to be chosen (pg 32, ln 14-19) and, moreover, "that in tilted observation a transmission minimum with T < 20% can only be achieved from a thickness of the highly refractive transparent waveguide layer of more than 130 nm" and that this "transmission minimum is essential in order to produce a color impression that is clearly perceptible to the human eye" (pg 33, ln 6-18, emphasis added).
To the extent that it is possible to achieve the purported effects without the features mentioned above, claim 3 is not enabled across its full scope.”
The Opponent’s arguments regarding s 40(2)(a) are essentially the same as the argument for utility. As I previously noted, a highly refractive transparent waveguide layer might be preferable but is not essential. For similar reasons as above in relation to utility, I consider the specification to provide a sufficient disclosure.
Support – legal principles
Section 40(3) states:
The claim or claims must be clear and succinct and supported by matter disclosed in the specification.
The requirement for support is intended to ensure that there is a basis in the description for each claim, and that the scope of the claims must not be broader than is justified by the extent of the description, drawings and the contribution to the art. There must also be consistency, or basis, for each claim in the description. This has been stated as meaning that “the definitions in the claims should essentially correspond to the scope of the invention as disclosed in the description. In other words ... the claims should not extend to subject-matter which, after reading the description, would still not be at the disposal of the person skilled in the art” (Generics (UK) Ltd v H Lundbeck A/S [2009] UKHL 12; [2009] RPC 13 at [97] per Lord Neuberger quoting with approval from Fuel Oils/EXXON (T409/91) [1994] OJ EPO 653).
In Biogen Inc v Medeva plc [1996] UKHL 18; [1997] RPC 1 at [57], Lord Hoffman referred to Asahi Kasei Kogyo KK’s Application [1991] RPC 485 to iterate that, for matter to be capable of supporting an invention, it must contain an “enabling disclosure”. That is, it must disclose the invention in a way which will enable it to be performed by a person skilled in the art. Lord Hoffmann subsequently described (at [63]) a long-established principle of patent law in the UK:
“... namely, that the specification must enable the invention to be performed to the full extent of the monopoly claimed. If the invention discloses a principle capable of general application, the claims may be in correspondingly general terms. The patentee need not show that he has proved its application in every individual instance. On the other hand, if the claims include a number of discrete methods or products, the patentee must enable the invention to be performed in respect of each of them.”
Support
The Opponent states:
“The Opponent submits that the scope of the claims exceeds any technical contribution to the field articulated in the body of the specification and the claims are not fully supported.
Claim 1 is directed to a security element having multiple transmissive diffraction structures which produce a colour change effect. Such transmissive diffraction structures are known and cannot constitute an inventive concept which contributes to the state of the art. To the extent that there is an inventive concept disclosed in the specification, it must relate to the particular type or types of transmissive diffraction structures, such as the "light valve" referred to by Schell but which is not present in claim 1.
As claim 1 is not limited to such structures, claim 1 lacks support.”
The “light valve” referred to by Mr Schell is not present in the claims or the description. There is no basis for expecting the claims to be limited to this particular understanding of the invention. I am not satisfied the claims lack support.
Clarity – Legal principles
Subsection 40(3) requires that the claims must be clear. 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.
Clarity
The Opponent states:
“Claim 1 defines:
i) “a substrate which has, in the first area, one or more transmissive diffraction structures”; and
ii) “wherein in the first area, two or more different transmissive diffraction structures are arranged”.
It is not clear whether the “two or more different transmissive diffraction structures” are different from and additional to the previously recited “one or more transmissive diffraction structures” such that a minimum of three transmissive diffraction structures are defined or whether the “two or more different transmissive diffraction structures” are different from each other (Lee 1 [0064]).”
The claim defines two transmissive diffraction structures. Although the claim refers to “one or more” diffractive structures in one part of the claim and “two or more” diffractive structures in another part of the claim, when read as a whole, it is clear that both parts of the claim are referring to the same diffractive structures. There is no irreconcilable inconsistency because “one or more” includes within its scope “two or more”. Although the claim would have been easier to understand if the claim stated “two or more transmissive diffraction structures which display one or more optical security features when observed in transmitted light”, this lack of elegance in the claim does not mean the claim is so unclear that the scope of the claim cannot be understood. I consider this aspect of the claim to be clear.
Conclusion
Claims 1-3, 6-14, 19, 20 lack novelty in light of US 2010/0315714.
Claims 1-14 and 19 and 20 lack an inventive step in light of US 2010/0315714 and common general knowledge.
The claims are considered supported by the description and clear. The claimed invention has utility. The description is considered to provide an enabling disclosure of the invention.
I am of the view that this matter may be overcome by amendment and consequently the Applicant is allowed 2 months from the date of this decision to propose suitable amendments.
Costs
The opposition is successful. Costs are awarded according the Schedule 8 against the Applicant, OVD Kinegram AG.
Xavier Gisz
Delegate of the Commissioner of Patents