Innovia Security Pty Ltd v De La Rue International Limited - [2015] APO 76

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Innovia Security Pty Ltd v De La Rue International Limited [2015] APO 76
Patent Application: 2007270922

Title:Security device

Patent Applicant:                   De La Rue International Limited
Opponent:  Innovia Security Pty Ltd
Delegate:  Greg Powell
Decision Date:  17 November 2015
Hearing Date:  26 August 2015

Catchwords: PATENTS - section 59 – opposition to the grant of a patent – whether the claimed invention is novel – lack of novelty not established – whether the claimed invention involves an inventive step – lack of inventive step established on evidence filed – whether the claims are clear and fairly based – claims clear but not fairly based – opposition successful – costs awarded against the applicant

Representation: Patent applicant: Davies Collison Dave, Melbourne
Opponent:Craig Smith of counsel and Craig Gleghorn, Patent attorney of Watermark, Melbourne

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2007270922

Title:Security device

Patent Applicant: De La Rue International Limited
Date of Decision: 17 November 2015
DECISION
The opposition is successful. Claims 1–36 lack an inventive step. Claim 1 is not fairly based.
Costs are awarded against De La Rue International Limited.
REASONS FOR DECISION
Background

Application 2007270922 in the name of De La Rue International Limited (“De La Rue”) was filed on 3 July 2007 and accepted on 24 April 2013. Innovia Security Pty Ltd (“Innovia”) filed a Notice of Opposition on 16 August 2013. The evidence in support of the opposition was completed on 14 March 2014. The evidence in answer was completed on 13 June 2014 and evidence in reply was completed on 13 August 2014. The hearing was held on 26 August 2015. In addition to the persons noted above, also in attendance at the hearing was Ian Lindsay of Innovia.
The Specification
The present invention relates to a security element for protecting valuable articles. The specification notes that a useful security device, which is readily verifiable by a user, is a clear transparent region (a window) in an otherwise opaque substrate. Noting that such a device could be reproduced by punching a hole in an opaque substrate and then placing a clear transparent polymeric film over the hole, the specification indicates that this problem has been addressed by the use of additional optically variable security devices in the window.
The specification describes prior approaches such as:
- a reflection-based diffractive device in the window;
- a diffractive optical element in the window such that, when collimated light passes through the diffractive optical element, it is transformed by the diffractive structure into a recognisable pattern; or
- first and second diffractive structures or gratings formed in respective first and second zones of a window which diffract particular wavelengths of light outside of the users field of view leaving selected wavelengths within the users field of view, thereby producing visually discernible colours which together form a projected security image.
These solutions have particulars problems. For example, the reflection-based diffractive device can “hide” the fact that there is a transparent window, so the user may not actually check for the presence of one. Diffractive optical elements that require a collimated light source would not easily verifiable by the general public who generally do not have access to the necessary equipment.
The object of the present invention is stated to be to “overcome or ameliorate one or more of the above described difficulties, or to at least provide a useful alternative”. This is achieved according to the specification by providing a security device which has an optical element in a first part of the window which redirects an off-axis light beam. The result is that when the device is viewed in transmission directly against a backlight which is in line with the device and the observer, the presence of the optical element cannot be discerned and the window appears featureless. However, when the light source is moved such that lines of sight from the viewer to the transparent region and from the transparent region to the backlight form an obtuse angle, the light redirected by the optical element can be seen which, being brighter than those parts of the window which do not have the optical element creates a contrast between the two parts and an image can be seen. The light source does not have to be a specific type. It simply must be a light source that is brighter than the ambient light level.
The basic invention is best illustrated in Figures 1a and 1b which are as follows:
The figures show that, when the window 1 is directly between a light source 6 and an observer, the light is not diffracted by the optical element 3 and the window seems uniformly bright and transparent. When the window is moved away from the light source creating a different viewing angle α, the light from the source is diffracted, making the regions of the window incorporating the optical element appear brighter than the surrounding regions, so that an image is apparent.
The specification ends with 36 claims as follows:
1. A security device comprising a substrate having a transparent region, wherein at least one optical element comprising a diffraction grating is provided in part of the transparent region, the optical element causing an incident off-axis light beam incident on the device in a direction offset from a perpendicular to the plane of the substrate and transmitted through the optical element to be redirected away from a line parallel with the incident light beam whereby when the device is viewed in transmission directly against a backlight defined by a light beam of higher intensity than the ambient light level and which is in line with the device and the observer, the presence of the optical element cannot be discerned but when the device is moved relative to the backlight such that lines of sight from the viewer to the transparent region and from the transparent region to the backlight form an obtuse angle at which redirected light is visible to the viewer, a first contrast is viewed between the part of the transparent region including the optical element and another part of the transparent region, and wherein when the security device is viewed in reflection under diffuse lighting conditions either no contrast can be discerned between the two parts or a second contrast, different from the first contrast, can be discerned between the two parts.
1. A device according to claim 1, wherein the optical element is transparent to visible light.
1. A device according to claim 2, wherein more than one diffraction grating is provided in the said part of the transparent region, each diffraction grating having a similar structure.
1. A device according to claim 3, wherein the or each diffraction grating is a linear diffraction grating.
1. A device according to claim 3 or claim 4, wherein the diffraction grating comprises a linear grating with a line density in the range 200-1500 lines/mm and more preferably in the range 250-1000 lines/mm and even more preferably in the range 300-700 lines/mm.
1. A device according to any of the preceding claims, wherein the angular spread of the redirected light is no more than 60°, preferably 1-25°, most preferably 5-15°.
1. A device according to any of the preceding claims, wherein the included angle between the incident off-axis light beam and the redirected light beam is in the range 130-175°, preferably 150-170°.
1. A device according to any of the preceding claims, wherein the contrast between the two parts defines a recognisable image.
1. A device according to claim 8, wherein the recognisable image comprises one or more alphanumeric characters, symbols, or graphical shapes.
1. A device according to any of the preceding claims, further comprising an image, viewable in both reflection and transmission, on a part of the window portion.
1. A device according to claim 10, wherein said part of the window portion is separate from the optical element(s).
1. A device according to claim 10, wherein said part of the window portion overlaps the at least one optical element.
1. A device according to any of claims 10 to 12, wherein said image is printed on said part of the window portion.
1. A device according to any of claims 10 to 13, wherein said image is defined by a metallisation on said part of said window portion.
1. A device according to any of claims 10 to 14, when dependent on claim 8 or claim 9, wherein the printed image cooperates with the recognisable image formed by the contrast between the two parts.
1. A device according to any of the preceding claims, further comprising a reflective based optical variable device such as a diffractive or holographic device, in the transparent region, that is transparent when viewed in transmission directly against the back light but replays an image when viewed in reflection.
1. A device according to claim 16, wherein the reflective based optical variable device extends over the at least one optical element.
1. A device according to claim 16, wherein the reflective based optical variable device is laterally offset from the at least one optical element.
1. A device according to claim 18, wherein the reflective based optical variable device is provided in said another part of the transparent region.
1. A device according to any of claims 16 to 19, wherein the reflective based optical variable device is provided on one side of the substrate and the optical element(s) on the opposite side of the substrate.
1. A device according to any of claims 16 to 20, wherein the reflective based optical variable device includes a high refractive index layer.
1. A device according to any of the preceding claims, wherein the substrate comprises paper or polymer such as plastics.
1. A device according to any of the preceding claims, wherein the or each optical element and/or the diffractive or holographic device is embossed into the substrate.
1. A device according to any of claim 1 ·to 22, wherein the or each optical element is adhered to the substrate.
1. A device according to any of claims 1 to 22, wherein the optical element(s) and/or the reflective based optical variable device is embossed into a lacquer on the substrate.
1. A device according to claim 25, wherein the lacquer is provided directly on the substrate surface.
1. A device according to claim 25 or claim 26, when dependent on at least claim 20, wherein lacquer layers are provided on opposite sides of the substrate, the optical element(s) being embossed in one of the lacquer layers and the reflective based optical variable device being embossed in ·the other lacquer layer.
1. A device according to claim 29, when dependent on any of claims 10 to 15,·wherein said image is located between the substrate and one of the lacquer layers, preferably the lacquer layer provided with the optical element(s).
1. A security document including a security device according to any of the preceding claims.
1. A security document according to claim 29, wherein a substrate of the security document provides the substrate of the security device.
1. A document according to claim 29 or claim 30, when dependent on at least claim 7, wherein the said recognisable image relates to an image elsewhere on the security document.
1. A security document according to any of claims 29 to 31, the security document being one of a banknote, fiscal stamp, cheque, postal stamp, certificate of authenticity, brand protection article, bond or payment voucher.
1. A method of validating a security device according to any one of claims 1 to 28, or 10 a security document according to any of claims 29 to 32, the method comprising viewing the security document in transmission against a backlight brighter than ambient light: and panning the security device such that the device is viewed directly against the backlight and indirectly against the backlight in turn so as to determine whether a contrast can be viewed between different parts of the transparent region.
1. A security device, substantially as hereinbefore described with reference to the accompanying drawings.
1. A security document, substantially as hereinbefore described with reference to the accompanying drawings.
1. A method of validating a security device, substantially as hereinbefore described with reference to the accompanying drawings.
Amendment to the Statement of Grounds and Particulars
While the hearing was scheduled for 26 August 2015, on 12 August 2015 Innovia filed an amended Statement of Grounds and Particulars (“SGP”). The amendments were to the particulars specified in the SGP. No Grounds were added. The parties were informed that the amendment would be dealt with at the hearing.
As this opposition was filed after 15 April 2013, amendment of the SGP is governed by regulation 5.16. This regulation, at (2), requires the Commissioner to:
(a)notify the applicant of the opponent’s request; and
(b)give the parties an opportunity to make representations about the amendment.
In the present case, De La Rue was notified of Innovia’s request, given a copy of the amended SGP and given an opportunity to make representations about the amendment. De La Rue made no submissions on the allowability of the amendment itself.
Regulation 5.16(4) indicates that, unless a request for dismissal of the opposition or a re‑examination is being considered, the Commissioner must make the amendment if “the Commissioner is satisfied that the amendment should be made”.
Given the lack of objection to the amendments from De La Rue, it remains for me to decide whether the amendment “should” be made. At the hearing I asked Innovia why the amendment was filed so late in the opposition process given that evidence had been on file for many months. Innovia responded that the amendment was mainly to harmonise the SGP with the grounds that were being taken forward.
I note that amendment limits the grounds of novelty to one document and the grounds of inventive step to two documents and common general knowledge, deletes the grounds of manner of manufacture and sufficiency, limits the ground of clarity to two points, but adds two new particulars to the ground of fair basis. The particulars added were that the claim 1 lacked fair basis because:
(a)There was no real and reasonably clear disclosure that the integer ‘no contrast can be discerned between the two parts’ was optional; and
(b)There was no real and reasonably clear disclosure in the specification of the ‘second contrast’
When I enquired of Innovia about this at the hearing, they indicated that the new particulars reflected the way the experts engaged the issue in their evidence. I cannot see this in the evidence. Indeed, I would be surprised if they had since the particulars were not present when the evidence was provided. However, I note there is discussion in the evidence on the matter of the second contrast in relation to novelty and inventive step. As such, the terms do assume some importance.
In the present case, I do not think that the amendments have greatly inconvenienced De La Rue. As noted by Innovia, De La Rue raised no reasons as to why the amendment was prejudicial in the sense that De La Rue has not found it necessary to undertake any action as a result of the new particulars. Consequently, I allow the amendment to the SGP.
For completeness, I note that De La Rue did make submissions inviting the Commissioner to allow the amendments on the condition that De La Rue is awarded costs in the opposition up until that point in time that the amended SGP was filed. While I do not believe that the Commissioner has the power to place conditions of allowance of amendments to the SGP, the timing of such amendments is a factor that has traditionally been taken into account when deciding whether, and to whom, to award costs and the quantum of such costs. I will discuss this further when addressing costs.
The Opposition
Innovia opposed the grant of a patent on the basis of:
(i)lack of novelty
(ii)lack of inventive step
(iii)non-compliance with section 40(3)
Evidence in support consists of two declarations as follows:
(i)Dr Robert Arthur Lee (Lee 1) with exhibits RAL-1 to RAL-9; and
(ii)Dr David Julian Pizzanelli (Pizzanelli 1) with exhibits DJP-1 to DJP-26.
Evidence in answer consisted of a single deliration by Dr Christopher John Eastell with exhibits CE-1 to CE-20
Evidence in reply was two further declarations Dr Robert Arthur Lee (Lee 2) and Dr David Julian Pizzanelli (Pizzanelli 2). No exhibits accompanied these declarations.
I will refer to the relevant parts of the evidence where appropriate.
DECISION
Onus of proof
The examination request for this patent application was filed on 17 May 2011. As a consequence, substantive amendments of the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 do not apply to the present application. This includes the amendment to subsection 60(3A) that allows the Commissioner to refuse a patent application if satisfied on the balance of probabilities that a ground of opposition exists.
Consequently the former standard for opposition proceedings applies and the opponent must establish that it is clear or practically certain that the patent is invalid (F Hoffman La Roche AG v New England Biolabs Inc [2000] FCA 283 at [29], [67]; [2000] FCA 283; 50 IPR 305 at 311, 319; Commissioner of Patents v Sherman [2008] FCAFC 182 at [18], [22]; [2008] FCAFC 182; 79 IPR 426; Genetics Institute Inc v Kirin-Amgen Inc [1999] FCA 742; [1999] 92 FCR 106 at [17]).
Clarity
Sheppard J summarised the rules of construction for a patent specification in Décor Corp v Dart Industries 13 IPR 385 at 400. This summary has been referred to in numerous subsequent judgements, and was endorsed by the Full Federal Court in Pfizer Overseas Pharmaceuticals v Eli Lilly [2005] FCAFC 224.
It is a recognised tenet of Australian patent law that each claim must be read as part of the entire specification (Electrical and Musical Industries Ltd v Lissen Ltd 56 RPC 23 at 39), and thus the meaning of the words used in a claim may be affected by what is said in the body of the specification (Rosedale Associated Manufacturers Ltd v Carlton Tyre Saving Co Ltd [1960] RPC 59 at 69). While noting that it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim, by adding to those words glosses drawn from other parts of the specification (Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588 and Decor Corporation Pty Ltd v Dart Industries Inc (supra)), it is legitimate to refer to the rest of the specification to explain the background to the claims, to ascertain the meaning of technical terms and resolve ambiguities in the construction of the claims (see Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461 at 476).
More recently, the approach to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70, 81 IPR 228 at [118] – [120]:
“the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear … while the claims define the monopoly claimed in the words of the patentee's choosing, the specification should be read as a whole … it is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification … terms in the claim which are unclear may be defined or clarified by reference to the body of the specification”
I also note what Middleton J said in Eli Lilly and Company Limited v Apotex Pty Ltd [2013] FCA 214, 100 IPR 451 at [139]:
“It is well settled that the Court should, from the outset, approach the task of patent construction with a generous measure of common sense. The Court must place itself in the position of a person skilled in the relevant art, being the subject matter of the patent. From this perspective, the patent is to be read as a whole, in the context of the specification and in light of the prevailing common general knowledge and state of the relevant art at the priority date.”

Innovia submitted that claim 1 lacked clarity because:
(i)The meaning of “second contrast” is unclear as the claim recites an effect produced by the device without defining the structural features of the device that produce the effect; and
(ii)It is not clear how the actually claimed structure can create the alternative effects defined in the latter part of the claim.
It is true that the structural features that claim 1 defines are a security device having a transparent region with a diffraction grating in part of the transparent region. It is also true that the claim recites the effect to be produced. However, I cannot see how it follows that the claim is unclear as a result of this wording. A claim will lack clarity if a third party cannot ascertain whether an act would fall within the scope of the claim (Monsanto Company v Commissioner of Patents (1974) 48 ALJR 59 per Stephen J. at 60). In the present case, the claim defines that when the security device is viewed in reflection under diffuse lighting conditions (i.e. in ambient light with no single lighting source), either there is no contrast between the different regions of the device or there is contrast, but it is not the same level of contrast between the two regions as that seen when the security device is viewed in transmission mode with an off-axis light source. This is a clear statement of the results to be achieved. Clearly devices which achieve either, or both, of these two results will fall within the scope of the claim. While this leaves open the actual structure(s) which achieves this outcome, that circumstance does not make the claim unclear as what falls within its scope.
While it is certainly possible to apply an overly meticulous, semantic analysis and come up with words or short phrases which are, strictly speaking, not perfect, I note it was said in Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag [2008] FCAFC 121, 77 IPR 229 at [81]:
“Lack of precise definition in claims is not fatal to their validity, so long as they provide a workable standard suitable to their intended use”
In my opinion, claim 1 provides a workable standard and, as such, does not lack clarity.
I raised at the hearing the point that claim 28 was appended forward to claim 29. Noting that claim 28 is defining “A device” and claim 29 is defining “A security document”, it was clear that the appendency was incorrect and that claim 28 was appended to one of claims 1-27. However, it was not clear which claim(s). Innovia pointed out that the appendency would have to be claim 25, 26 or 27 because it refers to lacquer layers which are not introduced until claim 25. I agree that this can be the only correct interpretation and I will proceed on this basis.
Fair basis
Under Section 40(3), fair basis is “concerned purely with the relationship between the body and claims of the one specification.” (Lockwood Security v Doric Products [2004] HCA 58; 217 CLR 274; 212 ALR 1; 79 ALJR 260). As was noted in Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8; 207 CLR 1; 177 ALR 460; 75 ALJR 518 “a comparison between the matter described in the specification and the claim which defines the scope of the monopoly”, following the reasoning of Barwick CJ in Olin Corporation v Super Cartridge Co Pty Ltd [1977] HCA 23; (1994) 180 CLR 236 when he said:
“The question whether the claim is fairly based is not to be resolved ... by considering whether a monopoly in the product would be an undue reward for the disclosure. Rather, the question is a narrow one, namely whether the claim to the product being new, useful, and inventive, that is to say, the claim as expressed, travels beyond the matter disclosed in the specification.”
As was noted in Lockwood (supra):
“the statutory test as expounded by Barwick CJ does not call for any evaluation of whether the breadth of the claims exceeds "the technical contribution to the art embodied in the invention", merely for an evaluation of whether the claims travel beyond the matter described in the specification”
I also note that it was said in Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd [1988] FCA 162 at [54]:
“The circumstance that something is a requirement for the best method of performing an invention does not make it necessarily a requirement for all claims; likewise, the circumstance that material is part of the description of the invention does not mean that it must be included as an integer of each claim. Rather, the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification”
This was cited with approval in Lockwood.
Innovia submitted that claim 1 did not satisfy section 40(3) because:
(i)There was no real and reasonably clear disclosure of the claim 1 feature “no contrast can be discerned between the two parts” as being optional; and
(ii)There was no real and reasonably clear disclosure of the “second contrast”.
Innovia submitted that the diffraction grating was represented in the description as having no contrast when viewed in reflection under diffuse lighting conditions. That is, no image could be seen because of the lack of contrast. Innovia submitted that the use of “either” in the claim meant that this feature was optional. Innovia pointed to a passage in the description at page 2 line 20 to page 3 line 4 which stated:
“A further important aspect of this security device is that the image cannot be detected when the device is viewed under reflected light. The fact that the image is not viewed in reflection under diffuse lighting conditions further increases the security of the device by making it impossible to mimic the silhouette of the image using conventional printing techniques which by their nature are visible in reflection and transmission.”
To achieve this effect Innovia submitted that the feature of no contrast existing between the two parts of the window had to be present. Innovia submitted that the use of “either” meant that the feature was not necessarily present in the claims.
During the hearing I highlighted a couple of passages in the specification. At page 2 lines 14–17 it was said:
“The security device is optically variable in the sense that when it is viewed in diffuse light, or directly backlit by a source that is aligned with the device and the observer, the image is essentially invisible, and the window appears transparent and featureless.” (my emphasis)
and 7 lines 25–30 that stated:
“When viewed in reflection under diffuse conditions the reflected light from the diffractive and non-diffractive regions is of a similar intensity because firstly the diffraction gratings are optimised for transmitted light and therefore the efficiency of the reflective diffractive component is low and secondly any residual non-zero (reflected) orders are continuously distributed and superimposed.” (my emphasis)
To my mind, these passages make a couple of things clear. Firstly, I believe that there is a disclosure of a second contrast. The value of this contrast is very close to 1, but it is, nevertheless, a contrast. Secondly, they show that the invention has a diffraction grating arranged in a window such that, when viewed in reflection, either there is no contrast between the parts that have the grating and those that do not, or the contrast between them is so low that, for both options, no image can be usefully determined. This is consistently shown throughout the description.
However, the claim does not have the limitation that the second contrast is limited to being a low value such that no image can be discerned. The claims simply defines that there is a second contrast which is “different” from the first and says nothing about its relative value. To be consistent with the invention as described, this second contrast had to have been limited to a value significantly lower than the first contrast such that no useful image can be discerned.
It follows that claim 1 is not fairly based. This is so notwithstanding that my finding does not, strictly speaking, fit under either of the particulars raised by Innovia under this ground.
Novelty
Following amendment of the SGP, Innovia relied upon one document for the ground of novelty. Innovia contended that the claims lacked novelty in light of AU 77389/94, which was referred in the opposition as D6.
It is a requirement of subsection 18(1) of the Patents Act (the Act) that the invention, so far as claimed in any claim, is novel. Subsection 7(1) states that an invention is taken to be novel unless it is not novel in the light of the prior art. A citation is part of the prior art base for the purposes of novelty if it was published before the priority date of the claim, or, as is the case for D1 and D2, information in an Australian patent specification which was published after the priority date where the information has an earlier priority date than the priority date of the claim.
It is well established that the general test for lack of novelty is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20], 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 the essential features of the invention as claimed (see Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 at 517). In order to meet this requirement, the prior art must "contain clear and unmistakeable directions to do what the patentee claims to have invented" (The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 at 486).
In AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99 it was noted (at [293]–[294]):
“The touchstone for determining whether a prior publication … anticipates a claimed invention, is stated in General Tire at 485 to 486:
When the prior inventor’s publication and the patentee’s claim have respectively been construed by the Court in the light of all properly admissible evidence ... the question whether the patentee’s claim is new ... falls to be decided as a question of fact. If the prior inventor’s publication contains a clear description of, or clear instructions to do or make, something that would infringe the patentee’s claim if carried out after the grant of the patentee’s patent, the patentee’s claim will have been shown to lack the necessary novelty, that is to say, it will have been anticipated. The prior inventor, however, and the patentee may have approached the same device from different starting points and may for this reason, or it may be for other reasons, have so described their devices that it cannot be immediately discerned from a reading of the language which they have respectively used that they have discovered in truth the same device; but if carrying out the directions contained in the prior inventor’s publications will inevitably result in something being made or done which, if the patentee’s patent were valid, would constitute an infringement of the patentee’s claim, this circumstance demonstrates that the patentee’s claim has in fact been anticipated.
If, on the other hand, 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 a way which would not do so, the patentee’s claim will not have been anticipated, although it may fail on the ground of obviousness. To anticipate the patentee’s claim the prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented ... a signpost, however clear, upon the road to the patentee’s invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee.
The metaphor of planting the flag has been taken up in this Court. For example, in ICI Chemicals, the Full Court at [51], after noting the metaphor, remarked that, in that case, the appellant’s argument involved the skilled addressee rummaging through a “flag locker” to find a flag which the prior art document possessed and could have planted. In Apotex Pty Ltd and Another v Sanofi-Aventis and Another [2008] FCA 1194; (2008) 78 IPR 485 (“Sanofi-Aventis (2008)”), Gyles J at [91] adopted a different metaphor, remarking that “anticipation is deadly but requires the accuracy of a sniper, not the firing of a 12 gauge shotgun”. Each metaphor underlines the importance of the specificity required in order for a prior art document to anticipate an invention as claimed.” (my emphasis)
D6 – AU 77389/94
There is no dispute that D6 is part of the prior art base that can be considered when assessing novelty.
D6 discloses a “value-bearing document” (such as a banknote) which carries a diffraction element. Figure 2 given below of D6 shows its invention best.
Figure 2 shows a banknote (1) having an opening (4) with a cover foil (5) fixed over the window. The cover foil has outer regions (11) of transparency with a security feature (12) formed on the inner regions. D6 states that the security feature:
“… is based for example on optical effects, for example in the form of a diffraction structure which is operative in a transmission mode. However, the additional security element 12 in the window-like opening 4 can not only be formed by a diffraction structure having an optical-diffraction and/or optical-refraction effect, for example a hologram, a pixelgram etc. It would also be possible to choose as the additional security element 12 for example a reflecting surface, a particular microprint, a thin-layer arrangement or some other configuration which can only be imitated with difficulty.”
The operation of the security feature is not further discussed in D6. That is, assuming a diffraction structure is chosen, it is not explicitly stated that it will cause an incident off-axis light beam to be redirected away from the line of the light beam to create a contrast between areas of the window that have a diffraction structure to make an image visible, while not deflecting a light beam that was on-axis to effectively hide the image.
Dr Lee in his declaration stated that, as the diffraction structure operated in transmission mode and could be a pixelgram, the security feature was a diffraction grating. He further stated that all transmission gratings caused an incident off-axis light beam to be redirected away from the line of the light beam to create a contrast between areas of the window that have a diffraction structure to make an image visible. He also indicated that all transmissive diffraction gratings would not deflect a light beam that was on-axis. He further stated that when a transmission diffractive grating was viewed in reflection under diffuse light conditions either no contrast would be seen or contrast of a lesser intensity. (Lee 1 [31]–[35])
In a similar way, Dr Pizzanelli indicated that, while D6 is not specific regarding whether the security element is an off-axis first-order diffraction device, or an in-line zero-order diffraction device, the skilled addressed would assume the diffractive security feature to be an off-axis first-order diffraction device since “the vast majority of holograms and optically variable devices used for security applications since 1980 has been off-axis first-order diffraction devices” (Pizzanelli 1 [125]).
Dr Eastell in answer states (see [37]) that, since D6 states at page 12 lines 1–4:
“… 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 …” (emphasis in evidence)
the structure must be one that is operative in reflected light (since it would not be transparent).
The problem with Innovia’s position is that there is no explicit disclosure in D6 of a security device having all the features of claim 1. In particular the disclosure relating to the security feature (12), to my mind, is not specific enough to satisfy the requirements of the law in novelty. Even accepting for the moment that transmission diffraction gratings operate exactly as defined in the claim, D6 does not have an explicit statement matching “the accuracy of a sniper” (Apotex supra). What it does have is a list of possible options which include, along with holograms and pixelgrams, a reflecting surface, a particular microprint and a thin-layer arrangement. That is, the reader is offered a choice between a diffraction structure and a non-diffraction structure and then, depending on which structure is chosen, a further choice of what “species” of structure to choose.
Innovia sought to make the case that a broad disclosure (here, a list of possible elements of the security device for D6) can anticipate a specific feature claimed. In this regard they referred to the decision of Jagot J in Apotex Pty Ltd v AstraZeneca AB (No 4) [2013] FCA 162 where it was stated at [313]:
“Construed in context, there is a clear direction in the 471 patent that rosuvastatin at a dose of anywhere between 0.5 to 200mg (which includes doses as specified in the 051 or low dose patent) will be useful in treating hypercholesterolemia in an oral once or twice daily administration. This necessarily encompasses the integer of a starting dose in claim 1 of the 051 or low dose patent as there will always be a starting dose to treat a disease by oral administration and the 471 patent directs the starting dose and the continuing doses to be in the range specified.”
That is, the finding was that the range in the citation (the 471 patent), within which sat the range defined in claim 1 of the patent in question, anticipated the claim. While this decision was overturned on appeal by the Full Court in AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99, Innovia maintained that was done for reasons specific to the facts of the case. Innovia pointed to [304] and [305] of the Full Court decision which stated:
“If, by that finding, the primary judge was saying that the 471 patent directs that any dosage within the stipulated range for oral administration would be suitable for treating hypercholesterolemia, then we would respectfully disagree with her Honour. In our view, the 471 patent is clear that the dose will vary depending on a number of factors, including importantly the disease to be treated. Further in our respectful view, the 471 patent discloses the possibility of different dosage regimens, including those involving single or divided doses.
If, on the other hand, the primary judge was finding only that the 471 patent directs that a suitable dosage will usually be found within the range stipulated for oral administration, then in our respectful view such a direction will be insufficient to disclose the invention claimed in claims 1 and 2 of the 051 or low dose patent, notwithstanding the disclosure in the 471 patent that the sodium and calcium salts of rosuvastatin are useful for treating hypercholesterolemia.”
Innovia submitted that this finding by the Full Court did not dislodge the overall point made by Jagot J that a broader disclosure can anticipate a narrower claim. Innovia pointed to [304] as indicating that the only reason the broad range disclosure was said not to anticipate the claimed range was because it was clear from the citation that the dose would vary depending on a number of factors, including the disease to be treated.
However, I cannot see how this line of reasoning can be applied to D6 such that it is a valid novelty citation. If I were follow this reasoning it would mean for novelty that a vast list of possibilities in a document would anticipate a claim to just one of those possibilities as long as the document did not say anything about factors involved in selecting one of the possibilities.

Such reasoning appears to go against the statement at [302] in the same decision by the Full Court that:
“Sufficiency of disclosure is a cardinal anterior requirement in the analysis of whether a prior art document anticipates a claimed invention. It is only after the stage of assessing the sufficiency of disclosure – which involves a determination about whether a prior document has “planted the flag” as opposed to having provided merely “a signpost, however clear, upon the road” or, perhaps, something less – that the notion of reverse infringement comes into play as the final and resolving step of the required analysis. It is not the first step of the required analysis; nor is it the only step.”
I cannot see that D6 has enough of a disclosure to state that it has planted a flag at the precise location of claim 1. The reader is offered choices, not a destination.
The claims do not lack novelty in light of D6.
Inventive Step
Subsection 7(2) of the Act 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. A document is prior art for this purpose if "a skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded [the document] as relevant" (s 7(3)).
The test for whether an invention is obvious is whether it would have been a matter of routine to proceed to the claimed invention. In Wellcome Foundation Ltd v V.R. Laboratories (Aust.) Pty Ltd [1981] HCA 12 at [45], 148 CLR 262 at 286 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.”
The High Court in Aktiebolaget Hässle v Alphapharm Pty Ltd (‘Alphapharm’) [2002] HCA 59 at [51]- [53]; 212 CLR 411 at [51]-[53] approved this approach, in addition to that taken in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157 at 187 in which Graham J had posed the question:
“Would the notional research group at the relevant date in all the circumstances directly be led as a matter of course to try [the claimed invention] in the expectation that it might well produce a useful [desired result]?”
Where the invention lies in a combination of features, the question is whether the combination, not each individual feature, is obvious when compared to the prior art base (Alphapharm [2002] HCA 59 at [41]; 212 CLR 411 at [41]; Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd (Minnesota Mining) [1980] HCA 9 at [116]; (1980) 144 CLR 253 at 293).
The usual approach to determining inventive step is the problem-solution approach. Once the problem has been formulated and the common general knowledge and the prior art base has been determined, the question of whether the claimed solution is obvious must be addressed.
The problem
In determining the problem or ‘starting point’ for considering inventive step, I note the words of the majority of the Full Court in AstraZeneca AB (supra) at [203] as follows:
“If the problem addressed by a patent specification is itself common general knowledge, or if knowledge of the problem is s 7(3) information, then such knowledge or information will be attributed to the hypothetical person skilled in the art for the purpose of assessing obviousness. But if the problem cannot be attributed to the hypothetical person skilled in the art in either of these ways then it is not permissible to attribute a knowledge of the problem on the basis of the inventor’s “starting point” such as might be gleaned from a reading of the complete specification as a whole.”
As already noted in this decision, the object of the present invention is to avoid the problems of the prior art or provide a useful alternative. No expert stated any other problem to be solved by the present invention and, therefore, do not state whether such a problem was common general knowledge in the art. Given the lack of evidence, I believe that it could be convincingly argued that the problem that the present invention solves is the object of the invention; being to provide a security element that avoids the problems of the prior art or provides a useful alternative.
The person skilled in the art
In general, the skilled person or addressee is the person who works in the art or science with which the invention is connected. He or she is a person, or team, likely to have a practical interest in the subject matter of the invention. While the skilled person may be assumed to be well versed in the relevant art, such a person must be taken to be non-inventive. (Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980 at [71]-[72]; 49 IPR 225 at [71]-[72] referring to Catnic Components Ltd v Hill &Smith Ltd [1982] RPC 183 at 242 and General Tire [1972] RPC 457 at 485; Minnesota Mining [1980] HCA 9 at [115]; 144 CLR 253 at 293).
There was no disagreement with the position that all experts who gave evidence in this opposition were suitable people skilled in the art. It was accepted that all could provide assistance to me in making my decision. For the purposes of this decision, I will treat Drs Lee, Pizzanelli and Eastell as people skilled in the art.
The common general knowledge in the art
A definition of common general knowledge was provided by Aitken J in Minnesota Mining [1980] HCA 9 at [115]; 144 CLR 253 at 292:
“The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge.”
Information cannot be treated as part of the common general knowledge in the absence of evidence of its general acceptance and assimilation by persons skilled in the relevant art (Alphapharm [2002] HCA 59 at [31]; 212 CLR 411 at [31]).
Inventive step
Claim 1 – Common general knowledge
From the evidence provided, the following can be said to be common general knowledge in the security document art:
(i)Optically variable devices (OVDs) such as holograms, diffraction gratings (both reflective and transmissive) could be used to produce visible effects that were difficult to counterfeit; (Eastell [11] for example)
(ii)A first-order, off-axis diffraction grating, which would redirect an off-axis light beam away from the line of the light beam, was a known type of OVD; (Eastell [61] for example)
(iii)OVDs that operate in transmitted light rather than reflected light will not exhibit any discernible optical effects when viewed in reflected light; (Eastell [15] for example)
(iv)Security documents (such as banknotes) with transparent windows formed either by creating an opening in an otherwise opaque substrate and covering it with a foil, or starting with a transparent substrate and covering all but the window area with opaque layers; (Eastell [9] for example) and
(v)Security documents carried OVDs in windows. (Eastell [10] for example)
The question that needs to be answered is quite simple – would it be obvious to a person skilled in the art to incorporate a first-order, off-axis diffraction grating as the OVD in part of a window of a security document?
In his evidence, Dr Pizzanelli clearly states that as of 4 July 2006:
“… there were no examples of banknotes with windows (or other security documents with windows) which contained … simple transparent off-axis diffraction gratings …” (Pizzanelli 1, [114])
That being said, I believe that it would have been routine to place a first-order, off-axis diffraction grating in the transparent window of a security document. Of particular relevance for this point is figure 2.9 on page 38 of “Optical Document Security” by Rudolf van Renesse (see exhibit CE-17 for example). This book has been referred to in previous decisions by the Commissioner (see Innovia Security Pty Ltd v Graphic Security Systems Corporation [2014] APO 9, Innovia Security Pty Ltd v Giesecke & Devrient GmbH [2015] APO 25 and Innovia Security Pty Ltd v OVD Kinegram AG [2015] APO 46 for example) as a standard text in the art and sets out common general knowledge in the art. The figure clearly shows the operation of an off-axis diffraction grating operating in the same way as is claimed. The fact that this OVD is discussed in a standard text about document security is clear evidence that the person skilled in the art, when looking to use an OVD in a document would, as a matter of routine, be led to try a first-order, off-axis diffraction grating in the expectation that it might well produce a useful result.
The next question is whether it would be routine to place the OVD in only part of the window. When discussing the security device of the claims, Dr Eastell states (at [62]):
“What is equally important is the provision of the "another" part of the transparent regions (which I have referred to above as the "second" part), against which the optical element displays a contrast in some viewing conditions, and not in others. It is this combination of "parts" which gives rise to the "image" displayed by the device. The basic grating disclosed in Figure 2.9 … will not display any "image". Rather, either the whole element will appear transparent and featureless (when viewed directly against the backlight), or the whole element will display diffracted light (when viewed from an appropriate angle). There will be no contrast between different parts of the device and hence no image.”
In response Dr Pizzanelli states (at [50]) that:
“[t]his would only be the case if 100% of the surface of the transparent substrate was covered with grating, if a lesser amount was diffractive, then there would be a contrast between the region that was diffracting light and the region that was not diffracting light. I believe that this would be understood as obvious to practitioner skilled in the art, because amongst the millions of diffractive off-axis, first order holograms and gratings made for security applications since 1980 very few, if any, have comprised a single colour across 100% of the surface.” (emphasis in the evidence)
I agree with the statement that it would have been well known to the person skilled in the art that only a single colour would have been seen if the complete surface had been covered with a diffraction grating and there would be contrast between those parts that did have a grating and those that did not. The question remains whether the person skilled in the art would have done this as a matter of course. In my opinion this would be done as matter of course. It is well known that gratings can be used to create images (holograms are one well known example). The pages of “Optical Document Security” by Rudolf van Renesse in evidence clearly show using gratings to create areas of differing contrast to form an image (see figure 6.40 on page 205 in exhibit CE-17). To my mind there is clear evidence to show that the person skilled in the art would incorporate a first-order, off-axis diffraction grating as the OVD in part of a window of a security document.
It follows, given the nature of first-order, off-axis diffraction gratings, that the results claimed in claim 1 would follow upon use of the diffraction grating in the usual way.
Therefore, claim 1 lacks an inventive step in light of common general knowledge.
Claim 1 – D6
Before commencing an analysis of whether claim 1 lacks and inventive step in light of D6, I must determine whether it is a document that would have been ascertained, understood and regarded relevant by a person skilled in the art. Of these three conditions, there can be no doubt that D6 would have been understood by a person skilled in the art. It deals with the exact same art as the present invention and uses the same terms and concepts. With respect to whether it would be regarded as relevant, again, it must be accepted that it does. It solves the same problem of avoiding issues with the prior art. Alternatively, it solves the problem of providing an alternative. With respect to whether D6 would have been ascertained, I must determine whether a person skilled in the art would have searched patent documents. Both Dr Lee and Mr Pizzanelli have stated that they would keep abreast of developments and knowledge in the field by reading published patent documents. Dr Eastell has not provided any contrary view on this and, indeed, has indicated that he was aware of patents and even drafted descriptions to enable applications to be filed. I am therefore satisfied that the skilled addressee in the field of security devices for security documents would have regard to patent specifications to gain ideas for solving a specific problem. I note that this is consistent with many recent decisions of the Commissioner concerning the same art (see, for example, Innovia Security Pty Ltd v OVD Kinegram AG [2015] APO 46, Innovia Security Pty Ltd v Giesecke & Devrient GmbH [2015] APO 25 and Innovia Security Pty Ltd v OVD Kinegram AG [2015] APO 26). It follows that D6 is available for considering inventive step.
Having determined that D6 is a document that would have been before the person skilled in the art and having determined the common general knowledge as I have, it follows that claim 1 lacks and inventive step in light of D6. As noted in my discussion for novelty, D6 provides a list of suitable options for the security feature. D6 clearly states that the element could be a diffraction structure which is operative in a transmission mode such as “a hologram, a pixelgram, etc”. It is clear that D6 is leading the person skilled in the art to try, as a matter of course, these options and that there is an expectation that could well produce a useful result. The evidence establishes that pixelgrams operate in the same way as the element defined in the claim. Hence the person skilled in the art, in implementing the invention of D6, would arrive at the invention defined in claim 1.
Dependent claims
Claim 2 defines that the optical element is transparent to visible light. This feature is disclosed in D6 and is common general knowledge in the art. This claim lacks an inventive step in light of either common general knowledge alone or D6.
Claim 3 defines that the transparent region carries more than one diffraction grating. It is known in the art that areas can carry more than one diffraction grating (figures 6.30 and 6.53–6.55 of RAL–6). This claim lacks an inventive step in light of either common general knowledge alone or D6.
Claims 4 and 5 define that the grating is a linear grating having a line density between 200–1500 lines/mm. The evidence from Dr Pizzanelli at least establishes that a standard linear diffraction grating has a density falling within this range. This is not disputed by Dr Eastell. These claims lack inventive step in light of either common general knowledge alone or D6.
Similarly claims 6 and 7 lack inventive step in light of either common general knowledge alone or D6 as they define features that, from the evidence of Dr Pizzanelli at least, a standard diffraction grating would be expected to have. This is not contradicted by Dr Eastell.
Claims 8 and 9 define that the contrast between the two areas of the element defines an image which could be alphanumeric characters, symbols of shapes. This feature is shown in D6 and it is also clear from the evidence that it was common general knowledge (figures 6.30 and 6.53–6.55 of RAL–6). These claims add noting inventive and lack inventive step in light of either common general knowledge alone or D6.
Claims 10–15 define that a further image is placed on the window, by printing or metallisation, which can be seen in transmitted and reflective light and which “cooperates” with the image formed by diffraction grating. Noting that “cooperate” has a broad scope, the evidence shows that such an arrangement is common general knowledge (figures 6.30 and 6.53–6.55 of RAL–6). D6 also shows an overprinted pattern which would, inherently, be visible in transmitted and reflected light. Dr Eastell does nothing to contradict this conclusion. These claims lack an inventive step in light of either common general knowledge alone or D6.
Claim 16 defines that the transparent region also carries a “reflective based optical variable device” that cannot be seen in transmission but becomes visible when seen in reflection. My conclusion with respect to claims 3 and 10–15 indicates that it would be common general knowledge to provide another, similar diffraction grating and/or a further image that can be seen in transmitted and reflective light. Moreover, it is not disputed by any expert that devices seen only in reflected light are well known in this art. The evidence shows that a number of holograms are visible with reflected light. The question is whether it would have been obvious to include these reflective gratings in the transparent region in addition to the transmissive diffractive structure. In relation to this claim Dr Eastell for De La Rue makes the follow statement:
I have seen no disclosure, in any of the prior art documents, of a security element comprising two different optically variable devices in this way, where one is operative on transmitted light and the other on reflected light. In all of the prior art documents, each security element comprises only a single optically variable device which is operative either on reflected or on transmitted light.”
This statement does not address the issue. The question is not whether the prior art shows this arrangement. The question is whether the person skilled in the art would, as a matter of course, try it in the expectation that it might well produce a useful result. Given that it was common general knowledge to have multiple images for security and that reflective gratings were common general knowledge, the creation of additional security images using a known optical element would, in my opinion, be something obvious to try in the expectation that it might produce a useful result (i.e. an additional security image). Hence, claim 16 lacks an inventive step in light of either common general knowledge alone or D6.
Claims 17–19 further define that the reflective optical element is positioned over the transmission optical element, or is offset from it. The evidence shows (see figure 6.49 of RAL–6 for example) that it was common general knowledge to include optical elements which extend over other optical elements or are offset from them. Furthermore, D6 discloses offsetting further optical elements from the transmission optical element. As such, these claims lack an inventive step in light of either common general knowledge alone or D6.
Claim 20 defines that the reflective optical element is on the opposite side of the substrate to the transmissive optical element. Only Dr Pizzanelli discusses this feature. Neither Dr Lee nor Dr Eastell provides any evidence on it. Dr Pizzanelli states that this feature:
“… is slightly less obvious, as providing the optical element(s) on one side of the substrate and the reflective based optical variable device on the other side of the substrate would require double the effort.”
Saying that something is “slightly less obvious” is odd wording. However, in the absence of any evidence from Dr Eastell, in my opinion what Dr Pizzanelli is saying is that this positioning of optical elements is not the most convenient arrangement (since it involves “double the effort”), but it still remains something the person skilled in the art might try in the expectation that it might produce a useful result. To my mind, claim 20 lacks an inventive step in light of either common general knowledge alone or D6.

The feature of claim 21 of a high refractive index layer is disclosed in D6 and is common general knowledge in the art (see, for example DJP–25). The addition of this feature adds no inventive step. Claim 21 lacks an inventive step in light of either common general knowledge alone or D6.
A substrate made of plastic, as defined in claim 22 is disclosed in D6 and is common general knowledge in the art (polymer banknotes being one example). This claim lacks an inventive step in light of either common general knowledge alone or D6.
The manufacturing processes for forming the optical element(s) of embossing the substrate, adhering the element(s) to the substrate, or embossing lacquer layer as defined in claims 23–26 are common general knowledge in the art (see, for example, RAL–1). As such, claims 23–26 lack an inventive step in light of either common general knowledge alone or D6.
Claim 27, similar to claim 20, places the optical elements in lacquer layers on either side of the substrate. Again Dr Pizzanelli is the only expert who comments on this and, again, states that it is “less obvious”. My opinion of what Dr Pizzanelli is saying in his evidence matches what I have indicated above for claim 20. Claim 27 defines an arrangement that the person skilled in the art might try in the expectation that it might produce a useful result. I am of this opinion even though paragraph [167] of Pizzanelli 1 ends with the words “this claim is not obvious” (my emphasis). These words are inconsistent with what the rest of this paragraph had stated and I believe that what Dr Pizzanelli was attempting to state was that claim 27 was defining additional effort for no benefit and was not inventive. Claim 27 lacks an inventive step in light of either common general knowledge alone or D6.
Claim 28 (assuming an appendency to one of claims 25–27) places the image defined in one of claims 10–15 between the substrate and the lacquer layer. This is stated, by Pizzanelli, to be the best location for the image. No other evidence is supplied by the other experts. While Dr Pizzanelli does not explicitly state why it is the best location, it seems to clear to me that placing the image between the two layers would protect it from the damage it would be exposed to were it on the outer surface. To my mind claim 28 defines a mere design choice and lacks an inventive step in light of either common general knowledge alone or D6.
Claims 29–31 defining that the security device is included on a security document with the image being seen in the security device being related to an image on another part of the security document lack an inventive step. The evidence (see RAL–4, 5 and 6 for example) clearly establishes that it is common general knowledge in this art for security devices to be incorporated into security documents (such as banknotes – this is also disclosed in D6) and for the image that is revealed to be related in some way (noting the breadth of the term “related”) to something else printed on the security document. These claims lack an inventive step in light of either common general knowledge alone or D6.
Claim 33, defining the method of verifying a security device by moving the device from a position where the device is directly between the light source and the viewer to another position where the device is offset from the light source is simply defining what is always done to make an image associated with a transmissive diffraction grating visible. It is common general knowledge in the art and adds nothing inventive. This claim lacks an inventive step in light of either common general knowledge alone or D6.
Omnibus claims 34–36 correspond to similar inventions covered by claims 1, 29 and 33. I consider these claims to lack inventive for the same reasons provided against claims 1, 29 and 33. The limitations added by the figures are either common general knowledge or relate to mere design choices in regards to the particular images shown. None of this can add an inventive step in light of either common general knowledge alone or D6.

100. To summarise, claims 1–36 lack an inventive step in light of either common general knowledge alone or D6.
CONCLUSION
101. The opposition is successful. The claim 1 is not fairly based and all claims lack an inventive step.
102. It is difficult to determine whether there is any patentable subject matter in the application. On the assumption that there is, I grant the application 60 days in which to file amendments directed at overcoming the negative findings of my decision.
COSTS
103. Innovia submitted that costs should follow the event.
104. As I noted above, the SGP was amended very shortly before the hearing. As I also noted above the timing of such amendments is a factor that has traditionally been taken into account when deciding whether, and to whom, to award costs and the quantum of such costs. De La Rue made the comment that the substantial change in the Innovia’s case was prejudicial to De La Rue since the scope of the opposition was identified at an early stage which would have facilitated the subsequent preparation of evidence. De La Rue commented that they had incurred substantial costs dealing with a case which the Opponent has decided to abandon immediately before the hearing. De La Rue sought costs on an indemnity basis.
105. Innovia has been successful. It is true that amendments to the SGP were filed. However, the evidence that support the finding of a lack of inventiveness was always there. Nothing was added by the amendments to this ground. While I note my finding of a lack of fair basis, that finding was, strictly speaking, not based on either of the two new particulars added by Innovia. As such I see no reason to alter the usual practice. I award costs against De La Rue.
Greg Powell
Delegate of the Commissioner of Patents