Innovia Security Pty Ltd v De La Rue International Limited - [2015] APO 55

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Innovia Security Pty Ltd v De La Rue International Limited [2015] APO 55

Patent Application: 2008243094

Title:Arrays of microlenses and arrays of microimages on transparent security substrates

Patent Applicant:                   De La Rue International Limited
Opponent:  Innovia Security Pty Ltd
Delegate:  Xavier Gisz
Decision Date:  20 August 2015
Hearing Date:  28 May 2015, in Melbourne

Catchwords: PATENTS - PATENTS - opposition to the grant of the patent under s 59 – opposed on the basis of novelty, inventive step and fair basis – opposition unsuccessful on all grounds – costs awarded against the opponent.

Representation: Patent applicant: Tom Cordiner of counsel instructed by Nik Ramchand and Aaron Yates of Davies Collison Cave
Opponent:Craig Smith of counsel instructed by Roger Green and Jeremy Robinson of Watermark and Ian Lindsay of Innovia Security Pty Ltd

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2008243094

Title:Arrays of microlenses and arrays of microimages on transparent security substrates

Patent Applicant: De La Rue International Limited
Date of Decision: 20 August 2015
DECISION
None of the grounds of opposition have been made out. The claimed invention is novel, inventive, and fairly based. I direct that the application proceed to grant subject to any appeal. I award costs according to schedule 8 against the opponent, Innovia Security Pty Ltd.
REASONS FOR DECISION
Background

Australian Patent Application No. 2008243094 entitled “Arrays of microlenses and arrays of microimages on transparent security substrates” (the Application) in the name of De La Rue International Limited (the Applicant) was advertised as accepted on 28 July 2011. The Application is a divisional application of 2005238699 and has the earliest priority date of 30 April 2004.
An opposition to the grant of the patent was filed by Innovia Security Pty Ltd (formerly Securency International Pty Ltd) (the Opponent) on 28 October 2011. The Opponent filed a Statement of Grounds and Particulars on 30 January 2012.
Evidence in Support was completed on 30 January 2013. Evidence in Answer was completed on 16 October 2013. Also on 16 October 2013 the Applicant proposed amendments to the specification. In response to the Opponent’s comments on the proposed amendments the Applicant proposed other amendments on 18 November 2013. The proposed amendments were advertised on 16 January 2014 and allowed on 24 March 2014. Evidence in Reply was completed on 17 January 2014.
The Opponent proposed amendments to the Statement of Grounds and Particulars on 22 January 2014. The amendments were allowed on 1 April 2014.
The Applicant completed further evidence on 1 August 2014. The Opponent completed further evidence in response on 3 September 2014.
On 10 February 2015 the Opponent requested to amend the Statement of Grounds and Particulars. The amendments to the Statement of Grounds and Particulars were allowed on 5 March 2015.
On 6 February 2015 the Opponent requested leave to file more further evidence. This request was allowed on 22 April 2015. On 22 May 2015 the Applicant filed responding further evidence.
The hearing was held in Melbourne on 28 May 2015.
The Opponent’s Evidence in Support comprises two declarations and accompanying exhibits:
- A declaration of David Ian Lindsay dated 30 April 2012 together with exhibits IDL-1 to IDL-6
- A declaration of Michael Christopher Hutley dated 25 January 2013 together with Exhibits MCH-1 - MCH-15
The Applicant’s Evidence in Answer comprises one declaration and accompanying exhibits:
- A declaration of Neil William Holland dated 15 October 2013 together with Exhibits NWH-1 to NWH-11.
The Opponent’s Evidence in Reply comprises one declaration and accompanying exhibits:
- A declaration of Bruce Alfred Hardwick dated 15 January 2014 together with Exhibits BAH-1 to BAH-15
The Applicant’s first round of Further Evidence comprises one declaration and accompanying exhibits:
- A declaration of Malcolm Robert Murray Knight dated 30 July 2014 together with exhibits MK-1 to MK-20
The Opponent’s first round of Further Evidence in response comprises one declaration and accompanying exhibits:
- A declaration by Bruce Alfred Hardwick dated 2 September 2014 together with exhibits BAH-16 to BAH-25.
The Opponent’s second round of Further Evidence comprises one declaration and accompanying exhibits:
- A declaration by Ian Michael Lancaster dated 5 February 2015 together with Exhibits IML-1 to IML-5.
The Applicant’s second round of Further Evidence in response comprises one declaration and accompanying exhibits:
- A declaration of Malcolm Robert Murray Knight dated 20 May 2015 together with Exhibit MK-21.
Specification
The specification (with proposed amendments of 18 November 2013) ends with 12 claims; one independent claim and 11 dependent claims. The claims are reproduced below:
1. A security device comprising a substrate having an array of microlenses on one side and defining a first frequency vector and at least two corresponding arrays of microimages on the other side and defining respective second frequency vectors, the microimages being located at a distance from the microlenses substantially equal to the focal length of the microlenses, the substrate being sufficiently transparent to enable light to pass through the microlenses so as to reach the microimages, wherein the at least two microimage arrays are in imperfect registration with the microlens array, and wherein the arrays of microimages are arranged such that their second frequency vectors are at different rotational angles and/or of different magnitude with respect to the first frequency vector of the microlens array, the arrangement being such that when the microimages are viewed through the microlens array, moiré magnified versions of the images are visible and, when the substrate is tilted in at least one direction, the magnified images of the arrays move in different directions.
2. A security device according to claim 1, wherein the microimages have been formed by one of printing on the substrate, selectively demetallising a coating on the substrate, and using light trapping tapered structures.
3. A device according to claim 1 or 2, wherein the magnified images can be moved to intersect one another on tilting the substrate.
4. A device according to any one of claims 1 to 3, wherein, the magnified images can be moved to form a complete image.
5. A device according to any one of the preceding claim, wherein the magnified images can be moved in opposite directions to each other on tilting the substrate.
6. A device according to any one of the preceding claims, wherein relative movement between the magnified images occurs in response to tilting the device in one direction but does not occur when tilting the device in another direction.
7. A device according to claim 6, wherein when the device is tilted in the another direction the magnified images all move in the same direction relative to each other.
8. A document incorporating a security design according to any one of claims 1 to7.
9. A document according to claim 8, the document comprising a document of value such as a banknote, travellers cheque, certificate of authenticity, stamp, bond, tax disc, fiscal stamp, secure label, passport or voucher.
10. A security device according to any one of claims 1 to 9, wherein the microimages within each array are the same, but differ from the microimages in the or each other array.
11. A device according to any one of claims 1 to 10, wherein the individual images with at least one of the microimage arrays are such that when the substrate is titled, the corresponding moiré magnified image rotates as it moves.
12. A security device, substantially as hereinbefore described with reference to the accompanying drawings.
The invention
The invention relates to a device formed from a microlens array positioned directly above a corresponding microimage array. The microlenses and microimages collectively can form interesting visual effects that become apparent when the device is tilted with respect to the viewer. Before proceeding to determine whether the application meets the requirements of the Act, I will first describe the technology utilised in the invention.
Moiré effect
The invention is based on the moiré effect. The moiré effect requires two layers; the top revealing layer is superimposed over and thus decodes information in the bottom layer. The top layer is a periodic structure that isolates (i.e. shows only part of) the features of the bottom layer of the same period. By varying the parameters of the microimage array with respect to the microlens array, different visual effects can be achieved.
Parameters
For a 2D array of spherical lenses, there are two main parameters that can be varied:
- Microimage array rotational alignment
- Microimage spacing/pitch
Varying these parameters changes the magnification and movement (both speed and direction) of the moiré images. It is notable that the magnification and movement are intertwined, with moiré magnification necessarily resulting in movement, and vice versa. Parameters must be carefully chosen to achieve the desired visual effect.
Although there are other parameters that can be varied (e.g. individual microimage size and orientation), these are peripheral to this brief explanation of the technology. I also note that the microimage spacing/pitch can be independently varied in two axes (horizontal and vertical), but it is unnecessary to delve into this aspect of the invention.
I have illustrated the parameters of microimage array rotational alignment and microimage spacing/pitch in relation to a microlens array, using the letter ‘c’ as the example microimage:
Moiré images
Moiré magnification is achieved by a mismatch between the lens array and the microimage array. This mismatch can be through the microimage spacing and/or microimage rotational alignment.
The description states at page 12:
“For the current invention the degree of rotational misalignment between the microimage and microlens array is preferably in the range 15° – 0.05°, which results in a magnification range of between ~4× – 1000× for the microimage array.”
The description further states at page 12:
“For the current invention a small pitch mismatch would equate to a percentage increase/decrease of the pitch of the microimage array relative to the microlens array in the range 25% – 0.1%, which results in a magnification range of between ~4× – 1000× for the microimage array.”
The period/spacing of microimages can be varied equally on both axes (vertical and horizontal) to form a uniform moiré magnification. However the period/spacing of microimages can be done independently and unequally so that moiré magnification is different in each axis (see embodiment shown in figure 34).
Representing the pair of parameters as vectors
The two parameters of rotational alignment and microimage spacing can be combined and represented as a single vector. The description notes at page 3 line 14 that the vector representation of microimage and microlens parameters is provided in the book “The theory of Moiré phenomenon” by I. Amidror.
The rotational alignment (i.e. the angle between the microimage array and the lens array) is the direction of the vector, while the spacing is the magnitude of the vector. Representing the parameters as a vector is useful in determining the resultant moiré image.
The vector representing the microlens array is f_microlens. The length of the vector represents the spacing of microlenses; the direction of the vector is chosen to coincide with the coordinate axis (i.e. set as a horizontal vector) consistent with the description and as a matter of convenience. The vector representing the microimage array is f_microimage. The length of the vector represents the spacing of the microimages; the direction of the vector represents the orientation of the microimage array with respect to the microlens array. These vectors are illustrated below:
Parallactic and ortho-parallactic movement of moiré images
The description states at page 4:
“If … we have a superposition of a microlens array and a microimage array then the resultant moiré frequency vector corresponds to the magnified image array which will be orientated at ~90° to the microlens and microimage arrays. The degree of magnification is dependent on the ratio of the frequency of the microimage over the frequency of the magnified (moiré) image, i.e: f_microimage/f_moiré. In the same manner that the orientation of the magnified image is rotated, the parallax affect (sic) that results in the apparent movement of the magnified image is also rotated. In this condition tilting the combined lens/image array vertically about the horizontal axis results in a counter intuitive horizontal motion in the magnified image. This is known as ortho-parallactic motion, i.e. motion perpendicular to the normal direction of the parallax and has been discussed in relation to security devices in a conference paper by Nanoventions. Inc in Proc. of SPIE-IS&T Electronic Imaging SPIE Vol. 5310 p321-327.”
There are two types of movement of the moiré image: parallactic and ortho-parallactic. Parallactic motion will result when the moiré magnification is the result of varying the spacing with respect to the microlens array. Ortho-parallactic motion will result when the moiré magnification is the result of varying the orientation with respect to the microlens array. Both parallactic and orth-parallactic movement can occur simultaneously. This would result in movement of the image at an angle that is neither parallel nor orthogonal to the direction of tilt.
The direction of movement of the moiré image is determined by subtracting the vector representing the microimage array from the vector representing microlens array. That is, f_movement is dependent on f_microimage – f_microlens. This can be represented with vectors as follows:
Multiple microimage arrays
Multiple microimage arrays can be superimposed on the same substrate. If the parameters (periods/spacing and orientation) differ between microimage arrays, then the resulting moiré images will be magnified and move differently.
Speed of apparent movement of moiré image
The speed of apparent movement can be dependent on the spacing (period length) between microimages alone. Alternatively, the speed of movement can be dependent on both the spacing and the orientation.
The description provides an example of varying the speed of movement of images depending only on the spacing (period length). The description states at page 33:
“The microimage array of the snail has a slightly smaller period length than the microimage array of the bird which in turn has a slightly smaller period than the·microlens array such that |f_microlens| < |f_bird| < |f_snail|. … On tilting the device the magnified image array of the bird appears to move at greater speed than the magnified image array of the snail such that the individual images become further apart on tilting as illustrated in Figure 37.”
The vector representation of this is given in figure 36 which is reproduced below:
The two resulting movement vectors are (f_microlens – f_snail) and (f_microlens-f_bird). The two vectors point in the same direction. It is notable (and will be discussed further in the decision) that although the length (magnitude) of vector |f_microlens – f_snail| is greater than the magnitude of the vector |f_microlens‑ f_bird|, the vector of greater length (magnitude) corresponds with slower movement of moiré image.
Because there is no angular misalignment between the microlens and microimage arrays, the motion is parallactic. This results in the moiré images moving at different speeds but the same direction as illustrated in figure 37 reproduced below:
Direction of apparent movement of moiré image
The direction of apparent movement is dependent on both the rotational alignment between the microlens array and the microimage array and on the spacing (period length) between microimages.
The specification provides various embodiments of moiré images moving in different directions. The simplest of these embodiments is given in figures 30 and 31:
This results in the moiré images C and O moving in opposite directions, and at one point intersecting to form the symbol ©. The frequency vectors are carefully chosen such that there is only ortho-parallactic (and no parallactic motion) at the same speed in opposite directions.
OPPOSITION UNDER SECTION 59
Onus of proof
The request for examination in this case was filed on 27 January 2009. Therefore, the substantive amendments of the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012, including subsection 60(3A) which allows the Commissioner to refuse a patent application if satisfied on the balance of probabilities that a ground of opposition exists, do not apply to the present application. Instead, the onus of proof in this opposition proceeding lies with the opponent, who must establish that it is clear that a valid patent cannot be granted (F.Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283 at [29], [67]; [2000] FCA 283; 50 IPR 305; Commissioner of Patents v Sherman [2008] FCAFC 182 at [18], [22]; [2008] FCAFC 182; 79 IPR 426).
Grounds of Opposition
The patent was opposed on the grounds that the patent application lacks of novelty, an inventive step, and fair basis.
Novelty
The Opponent argued the following documents anticipate the claimed invention:
· D1 – US 5,712,731 (DRINKWATER et al), 27 January 1998
·D11 – “Unison™ Micro-optic Security Film” Steenblik & Hurt, SPIE-IS&T Electronic Imaging SPIE Vol. 5310 p 321-327, 3 June 2004
· D22 – WO 2005/052650, 9 June 2005
D1 – US 5,712,731 (DRINKWATER et al) 27 January 1998
The Opponent argued that one embodiment in D1 disclosed the same invention as defined in claim 1. This embodiment is given in D1 at column 9 lines 11 to 34:
“This invention also provides for another technique where two microimage patterns are again laid down but form an image again with different moiré repeats in order to make copying and counterfeit more difficult. In this case both images originate from the same lens array. Both images A and B are then used for different print runs on a document possibly but not essentially using inks of different colours. During printing one array is deliberately twisted out of alignment relative to the other array so that the printed security device consists of two arrays of the same pitch but rotated relative to each other. The same effect could be obtained in a more controlled way by using one master recording with the recorded lens array twisted between exposures. The single recording would provide tight control on relative moiré pitches and image sizes, the double recording double print would provide for a colour differential. In this case when viewed with an analysing array either separately from the document or affixed to it the two arrays display images of different sizes and moiré repeats. Depending on the twist mismatch angle the differences in image sizes and repeats between the composite images could be large or small, for example a few large image A's combined with a large number of small image B's that would move much more rapidly with tilt.”
D1 is silent to the direction of movement of the moiré images, only mentioning the speed of the images. Consequently I find that D1 does not explicitly or inherently disclose the feature of moiré images moving in different directions, thus claim 1 is novel in light of D1.
D11 – “Unison™ Micro-optic Security Film” Steenblik & Hurt
Under section 7(1)(a) prior art information for the purposes of novelty is limited to:
“prior art information … made publicly available in a single document or through doing a single act.”
I will consider whether the information disclosed in D11 was made publicly available through either: a) by disclosure in a document, or b) through doing a single act.
Publication of D11

D11 was published on 3 June 2004 (see paragraph 48 of Malcolm Knight declaration). The Opponent has argued that advanced copies of the paper were made available to participants of the conference before the priority date 30 April 2004. The evidence supports the contention that advanced copies of the paper were publicly available before the priority date, however none of these advanced copies have been provided in the evidence, and I am not satisfied that these advanced copies were identical to the document published on 3 June 2014.
Although it may be possible to establish that a document must have existed before a particular date while not providing a copy of that document nor providing the exact date of publication, the evidence would need to be overwhelming. In this case I am of the opinion that it is likely that advanced copies of the D11 paper were publicly available before the priority date, however I cannot be certain of exactly what was disclosed in those advanced copies. Therefore, I am not satisfied that D11 (or an early version thereof) is a document that was published before the priority date.
Disclosure through doing an act – prior use
Establishing what was disclosed through doing an act is difficult because this must be based on inferences drawn from indirect evidence. In this case the evidence includes the paper published after the priority date, the declarations of Dr Hardwick, Mr Lancaster and Mr Knight, and an article in Holography News of March 2004.
The D11 paper published after the priority date states at page 325:
“One Unison film can even incorporate two Motion images that may be in different colors and may move in opposite ortho-parallactic directions (one left, the other right…).”
Although it is tempting to infer that this disclosure was also made by Mr Steenblik at the Conference on Optical Security and Counterfeit Deterrence Techniques V on 20‑22 January 2004, this is not necessarily the case. Indeed, as the disclosure in D11 at page 325 is only a single sentence phrased almost as an afterthought, it is quite plausible that Mr Steenblik did not make such a disclosure at the conference, and it was instead first disclosed in the D11 paper published on 3 June 2004.
Mr Lancaster states in his declaration at paragraphs 17-19:
“I recall that the presentation by Steenblik at the conference described a new type of security film called “Unison™” by Nanoventions which used an array of micro-lenses and an array of micro-images to produce synthetic images with unusual visual effects such as floating effects and motion effects, including images moving in orthoparallactic directions.
The presentation by Steenblik caused quite a stir at the conference. In the evenings of the conference, there were tabletop presentations at which samples of security elements featured in some of the oral presentations were on display. I remember viewing samples of the “Unison™ Micro-optic Security Film” made by Nanoventions at the tabletop presentation at the conference in January 2004. I found the visual effects created by the samples of the “Unison™ Micro-optic Security Film” quite striking, and also recall one sample which showed two images moving in opposite orthoparallactic directions, as described at page 325 of the Steenblik paper. A lot of people who attended the conference also showed interest in the oral presentation by Steenblik and in the samples of the “Unison™ Micro-optic Security Film” of Nanoventions at the tabletop presentations.
After the conference on Optical Security and Counterfeit Deterrence Techniques V in January 2004, I wrote an article on the “Unison™ Micro-optic Security Film” of Nanoventions for Holography News. This article was published in Holography News, Volume 18 No.2, which was published in March 2004, before the priority date of 30 April 2004. A copy of that article is attached as Exhibit IML-5.”
In his second declaration, Mr Knight states at paragraph 10:
“At paragraph 19 of his declaration, Mr Lancaster refers to an article he wrote on the "Unison Micro-optic Security Film" for Holography News, which was published in March 2004 (Lancaster Article). Now produced and shown to me and marked exhibit MK-21 is a copy of the Lancaster Article. I note that the Lancaster Article, on page 8, describes the Unison film unveiled by Nanoventions at the 2004 OSCDT conference and refers to the "SuperDeep" and "Motion" effects. The article describes the latter effect as presenting "graphics that move perpendicular to the tilt of the film - if tilted up, the graphics move side-to-side; if tilted to the side, the graphics move up and down." The article does not, however, make any reference to the movement of images in opposite ortho-parallactic directions, notwithstanding Mr Lancaster's comment at paragraph [18] of his declaration that he considered such an effect to be quite striking. It seems likely that the Lancaster Article, written shortly after the conference, is the most accurate reflection of what Mr Lancaster understood to be the features of the Unison film, and is likely to be more accurate than a recollection made more than 10 years after the event in light of the opposed Application.”
The Holography News article is the only contemporaneous record of the alleged disclosure and does not mention two sets of moving images let alone the images moving in different directions. I am not satisfied that Mr Lancaster’s recollection of an event more than 10 years can be relied upon to supplement such a significant detail to the contemporaneous record.
Overall, I am not satisfied that the concept of two moiré images moving in opposite directions was disclosed before the priority date. The information contained in D11 was not made publicly available through either publication or an act before the priority date, and thus cannot be considered prior art.
D22 – WO2005/052650 (AU 2004294182) 9 June 2005 – whole of contents
Whole of contents
Documents that are published before the priority date are part of the prior art base as defined in part (a) of the definition of “prior art base” in Schedule 1 of the Act.
Documents that are published after the priority date may form part of the prior art base as defined in part (b)(ii) if the three additional conditions are met. These are known as “whole of contents” prior art documents.
The definition of “prior art base” given in Schedule 1 of the Act is reproduced below:
"prior art base" means:
(a) in relation to deciding whether an invention does or does not involve an inventive step or an innovative step:
(i) information in a document that is publicly available, whether in or out of the patent area; and
(ii) information made publicly available through doing an act, whether in or out of the patent area.
(b) in relation to deciding whether an invention is or is not novel:
(i) information of a kind mentioned in paragraph (a); and
(ii) information contained in a published specification filed in respect of a complete application where:
(A) if the information is, or were to be, the subject of a claim of the specification, the claim has, or would have, a priority date earlier than that of the claim under consideration; and
(B) the specification was published on or after the priority date of the claim under consideration; and
(C) the information was contained in the specification on its filing date.
D22 is a PCT application. A PCT application which has designated Australia is treated as an Australian patent application under the Act. D22 has three priority documents, two of which have priority dates before the priority date of the opposed application (30 April 2004). I have reviewed the two early priority documents (US 60/524,281 and US 60/538,392) and am satisfied that information contained in document D22 relevant to the present consideration of novelty is entitled to the priority dates claimed (most notably the disclosure of US 60/538,392 at page 9 lines 12-14). Consequently, document D22 satisfies condition (A).
D22 was published on 9 June 2005 which is after the priority date (30 April 2004) of the presently opposed application. Consequently, D22 satisfies condition (B).
D22 is unamended and thus it logically follows that the information contained in the specification was the same information at the filing date. Consequently, D22 satisfies condition (C).
D22 states in the sentence that spans from page 5 line 23 to page 6 line 1 (my emphasis in bold):
“Multiple Unison effects can be combined in one film, such as a film that incorporates multiple Unison Motion image planes that can be different in form, color, movement direction, and magnification.”
By itself, this brief disclosure is not sufficient to anticipate the claimed invention as there is simply not enough information to establish all the claimed features are disclosed.
It may be possible that the disclosure of D22 at page 5 line 23 to page 6 line 1 could be considered in light of the rest of the document such that, read as a whole, it provides a clear and unmistakable disclosure of the claimed invention. The most compelling disclosure of D22 which could be read together with the ‘different movement direction’ disclosure is at page 29 line 18 to page 30 line 4:
“Figs. 6 a-c illustrate a method for causing one synthetically magnified OPM image 98 to morph into another synthetically magnified image 102 as the first image moves across a boundary 104 in the icon element patterns 92 and 94. Icon element pattern 92 bears circle-shaped icon elements 98, shown in the magnified inset 96.
Icon element pattern 94 bears star-shaped icon elements 102, shown in the magnified inset 100. Icon element patterns 92 and 94 are not separate objects, but are joined at their boundary 104. When the material is assembled using this combined pattern of icon elements the resulting OPM images will show the morphing effects depicted in Figs. 6b and c. Fig. 6b shows OPM circle images 98 moving to the right 107 across the boundary 104 and emerging from the boundary as star images 102 also moving to the right.”
Figures 6a to 6c are reproduced below:
The question is whether the disclosure of figures 6a-c showing movement of two images (circles and stars) in the same direction can be read together with the disclosure on page 6 of images that can be different in movement directions.
I do not consider reading together these disparate embodiments is necessarily inherent. For example, the disclosure on page 6 could equally be read together with the disclosure in figure 10. The disclosure in figure 10 discloses an embodiment with two levels of microimage planes and two levels of microlens arrays. I do not consider the disclosure of two levels of microimage planes and microlens arrays falls within the scope of ‘an array of microlenses’ with ‘microimages being located at a distance from the microlenses’. Consequently, D22 does not provide clear and unmistakable directions of two moiré images moving in different directions and thus claim 1 is novel in light of D22.
Inventive step
The test for obviousness 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 Justice Aickin 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.”
I have found that D11 was published after the priority date and therefore is not a prior art document for novelty or inventive step. D22 is also published after the priority date and is not a prior art document for the purposes of inventive step. The inventive step of the claims in light of D1 is considered below.
Person skilled in the art
Each of Mr Hutley, Mr Holland, Dr Hardwick, and Mr Knight have extensive experience in security documents and all can provide useful insight in the knowledge and expected activity of a person skilled in the art. The Applicant states in their submissions:
“The skilled address of AU’094 would be a person with a practical interest in the design or manufacture of security devices. That person would not be inventive but would have a reasonable knowledge of the area gained from attendance at conferences, review of textbooks and reviewing published papers.”
I am satisfied with this characterisation of a person skilled in the art.
Problem
The description acknowledges that it was known to use microlens arrays and microimage arrays to generate moiré images that move when tilted (page 3 lines 1 to 12). Consistent with Mr Holland’s declaration at paragraphs 46 to 52, I consider the problem is a lack of variety in visual effects in existing security devices which utilise moiré images.
Ascertained, understood and regarded as relevant
As the art of security documents is a competitive and well documented in patents, research papers, conference papers, and textbooks, I consider it reasonable that a person skilled in the art would review all these relevant source of information. Dr Hardwick, whose skills and knowledge is representative of a person skilled in the art, states that he reviewed such aforementioned documents.
The Drinkwater patent is clearly directed to security devices utilising microlens and microimage arrays. I am satisfied that a person skilled in the art would, in seeking information on moiré magnifiers, have ascertained, understood and regarded as relevant the Drinkwater patent.
Obviousness
D1 – US 5,712,731 (DRINKWATER et al) 27 January 1998
I have found in the consideration of novelty that D1 does not disclose two moiré images moving in different directions.
D1 discloses two moiré images moving at different speeds. The present invention also discloses moiré images moving at different speeds at page 33. Comparing these two disclosures is helpful in determining what D1 actually discloses.
The description states at page 33:
“The microimage array of the snail has a slightly smaller period length than the microimage array of the bird which in turn has a slightly smaller period than the·microlens array such that |f_microlens| < |f_bird| < |f_snail|. In this arrangement the magnified (moiré) image array of the bird, represented by |f_microlens – f_bird|, has a lower frequency and therefore greater magnification [than] the magnified (moiré) array of the snail, represented by |f_microlens – f_snail|. On tilting the device the magnified image array of the bird appears to move at greater speed than the magnified image array of the snail such that the individual images become further apart on tilting as illustrated in Figure 37.”
That is, the bird image has greater moiré magnification and greater speed of movement than the snail image which has lesser moiré magnification and lesser speed of movement. The speed of movement of the moiré images is (counterintuitively) inversely related to the length (magnitude) of the movement vector (as shown in figure 36); the longer vector |f_microlens – f_snail| corresponds to slower moiré movement, whereas the shorter vector |f_microlens – f_bird| corresponds to faster moiré movement.
This is contrasted against D1 which states at column 9 lines 29 to 34:
“Depending on the twist mismatch angle the differences in image sizes and repeats between the composite images could be large or small, for example a few large image A's combined with a large number of small image B's that would move much more rapidly with tilt.”
That is, the A moiré image has greater magnification but slower speed of movement than the B moiré image which has lesser magnification but greater speed of movement.
D1 and the presently opposed specification have embodiments which appear to describe the same technical features – two different moiré magnifications and speed of movement – but resulting in two starkly different effects: the embodiment of the opposed specification teaches that greater moiré magnification leads to moiré images with faster movement, whereas D1 teaches that greater magnification leads to moiré images with slower movement.
This apparent difference of disclosures in D1 and the invention of the presently opposed application is difficult to reconcile. Although I had initially assumed that greater moiré magnification would lead to slower movement, and vice versa (i.e. less moiré magnification would lead to faster movement), I have no firm basis to believe there is an error in the opposed specification. Indeed, the opposed specification is unequivocal in both figure 37 and accompanying description that cannot be attributed to a simple accidental inversion of words.
In the absence of further evidence or explanation that reconciles this inconsistency, I conclude that the technical features disclosed in D1 differ to the technical features in embodiment shown in figures 36 and 37 of the opposed specification.
Dr Hardwick states in his first declaration at paragraph 99:
“Referring to paragraph 68 of Holland’s declaration, I consider Drinkwater describes a device having all of the structural features of claim 1. Drinkwater does not specifically mention an arrangement in which two moiré magnified images move in different directions, but this is one of the possibilities of the arrangement of Drinkwater which could be created by recording two different microimage arrays with appropriate choice of different pitch and/or rotational angles. I disagree with the last sentence in paragraph 68. I consider the Drinkwater patent at least was common general knowledge in the security printing industry in Australia at the priority date, and if I had considered the Drinkwater patent in combination with the Steenblik paper on the Unison™ Security Film (Exhibit BAH-5) at the priority date, I would certainly have considered it was worth trying to develop a device with two moiré magnified images moving in different directions.”
Dr Hardwick asserts that ‘appropriate choice of different pitch and/or rotational angles’ will result in moiré images moving in different directions but provides no insight into how those parameters would be chosen.
Mr Holland states at paragraph 68 of his declaration:
“Although Drinkwater describes using microimage arrays and microlens arrays to generate multiple moiré effect images, it does not describe to me a device akin to that described in claim 1 of the Application. In particular, it does not describe a device with a sufficiently transparent substrate and with microlenses on one side and multiple arrays of microimages on another, arranged so that when the substrate is tilted, multiple moiré magnified images move in different directions. On the contrary, Drinkwater suggests to me that if you have multiple moiré magnified images, you can control their rate of movement by altering the periodicity difference between the microlens array and the microimage array. Had I read Drinkwater at the priority date, it would not have suggested to me that it would be a good idea (or even feasible) for security device developers to try to develop a device where two moiré magnified images would move in different directions upon tilting a substrate having microlenses on one side and microimages on another.”
Given the aforementioned differences in technical features of D1 and the presently opposed specification, I am unable to determine how D1 could be modified to result in the claimed invention. Consequently I find Mr Holland’s evidence on the question of obviousness more persuasive than Dr Hardwick’s evidence and thus the claims are considered inventive in light of D1.
Fair basis
The Opponent states in their submissions:
“While the various claims of the Application seek to monopolise a broad range of design choices for a multiple image moiré magnifier device, the specification only provides a real and reasonably clear disclosure of the design choice of claim 4 as being an invention, namely the use of magnified images that can be moved to form a complete image.”
The specification states at page 6 lines 21 to 25:
“Embodiments of the present invention provide improved optically variable devices, based on the interaction between an analysing array of microlenses and a corresponding set of two or more microimage arrays, where the resultant magnified images move on tilting the device to form one completed image.”

Although the embodiments of the invention are all directed to completing an image from two moving moiré images, the invention described is clearly capable of the two moiré images moving without any deliberate visual interaction. I am satisfied that the description is consistent with scope of claim 1. Thus the claims are fairly based on the description.
Conclusion
The opposition is unsuccessful. The Opponent has not established that the claims lack novelty, inventive step, or fair basis.
Costs
Costs typically follow the event, however a variation of costs can be made to reflect actions of parties during the opposition. For example, the amendment to the specification or to the Statement of Grounds and Particulars may warrant a variation in costs.
Amendments to the specification were proposed on 16 October 2013 and superseding amendments proposed on 18 November 2013. The amendments added the word ‘the’ in the claim to make an antecedent explicit. I do not consider that this amendment was as a result of the opposition nor would the outcome of the hearing been altered had the amendment not been made. A variation of costs on the basis of the amendment to the specification is not warranted.
Costs are awarded in accordance with Schedule 8 against the Opponent, Innovia Security Pty Ltd.
Xavier Gisz
Delegate of the Commissioner of Patents