Innovia Security Pty Ltd v De La Rue International Limited - [2015] APO 43

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Innovia Security Pty Ltd v De La Rue International Limited [2015] APO 43

Patent Application: 2007283286

Title:Photonic Crystal Security Device

Patent Applicant: De La Rue International Limited

Opponent: Innovia Security Pty Ltd

Delegate: Dr N.R. Madsen

Decision Date: 31 July 2015

Hearing Date: 29 June 2015, in Canberra

Catchwords: PATENTS – external stimulus of photonic crystals for security documents – section 59 – opposition to grant of a patent – construction of claim preamble – capability/suitability for use claims – grounds of clarity, novelty and inventive step – claims clear – certain claims not novel – certain claims not inventive – opposition successful – opportunity to amend – costs awarded against applicant
Representation: Patent applicant: Tom Cordiner of counsel
Opponent:Watermark Patent and Trade Mark Attorneys

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2007283286

Title:Photonic Crystal Security Device
Patent Applicant: De La Rue International Limited

Date of Decision: 31 July 2015

DECISION

The opposition is successful.

Claims 1-8, 10, 11, 13-15, and 22 lack novelty and lack an inventive step. Further dependent claims 9, 16-18, 20 and 21 are novel but also lack an inventive step. Claims 12 and 19 are inventive.

I allow the applicant two (2) months from the date of this decision to propose amendments to overcome these deficiencies.

I award costs in accordance with Schedule 8 of the Patent Regulations against De La Rue International Limited.

REASONS FOR DECISION

Background

This matter relates to patent application 2007283286 in the name of De La Rue International Limited (the applicant), filed on 10 August 2007 as an application under the Patent Cooperation Treaty. The application claims priority from GB 0615921.4 which was filed on 10 August 2006.

The request for examination of the patent application was filed on 28 January 2009. 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 patent 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. I also note that any subsequent reference to subsections of the Patents Act relates to the Patents Act 1990, prior to amendment by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012.

The application was advertised as accepted on 8 December 2011. A notice of opposition to grant of a patent was filed on 8 March 2012 by Securency International Pty Ltd who later changed their name to Innovia Security Pty Ltd (the opponent), followed by a statement of grounds and particulars on 8 June 2012. The opponent completed evidence in support on 8 August 2013 and on the same day filed amendment to their statement of grounds and particulars. This amended statement of grounds and particulars provides the basis of the opposition to be heard.
Before filing of evidence in answer, the applicant amended the description and claims. These amendments were allowed and incorporated into the specification on 24 March 2014. Evidence in answer was completed on 23 April 2014, followed by completion of evidence in reply on 23 July 2014.

The opponent filed written submissions on 15 June 2015 and chose to appear by way of these written submissions supplemented by further written submissions filed on 25 June 2015. The applicant chose to appear in person represented by counsel.

The evidence

Evidence consists of:

Evidence in support in the form of a declaration from Mr John Roger Green (JRG #1) dated 8 March 2013 and 16 supporting exhibits (JRG-1 to JRG-16)
Evidence in support in the form of a declaration from Dr Vladimir Kitaev (VK) dated 30 July 2013 and 29 supporting exhibits (VK-1 to VK-29)
Evidence in answer in the form of a declaration from Mr Neil William Holland (NWH) dated 22 April 2014 and 9 supporting exhibits (NWH-1 to NWH-9)
Evidence in reply in the form of a declaration from Dr Bruce Alfred Hardwick (BAH) dated 20 July 2015 and 16 supporting exhibits (BAH-1 to BAH-16)
Evidence in reply in the form of a declaration from Mr John Roger Green (JRG #2) dated 22 July 2014 and 2 supporting exhibits (JRG-17 and JRG-18)
Evidence in reply in the form of a declaration from Mr Gary Fairless Power (GFP) dated 23 July 2014 and 2 supporting exhibits (GP-1 and GP-2)

Onus

It is well established under the previous legislation that in proceedings such as these before the Commissioner, the onus rests with the opponent to clearly establish its case in reaching a conclusion on any issue. In F. Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283, Emmett J of the Federal Court found that in opposition proceedings, the Court (and by implication the Commissioner of Patents in her role as a tribunal) should be "clearly satisfied that the patent, if granted, would not be valid". Where questions of fact such as obviousness and existence of invention are involved "the grant should not be refused unless it has been clearly shown that the grounds of opposition have been clearly made out" (Montecatini v Eastman Kodak (1971) 45 ALJR 593).

Grounds of Opposition

The opponent pressed the following grounds in their written submissions:

·Lack of clarity of the claims
·Lack of novelty
·Lack of inventive step

The Specification

The invention described in the specification relates to the field of security documents, such as banknotes, which have particular optical structures provided to protect the documents from being copied. In particular, the present invention relates to security documents that carry optically variable devices that exhibit changing colour effects.
The specification discusses that documents such as banknotes frequently carry optically variable devices that exhibit angularly dependent coloured reflection, noting that it is well known to use liquid crystal materials or thin film interference structures to generate such coloured reflection. Due to the planar nature of these structures the variation in colour effects is rather limited. For example, effects such as a simple red to green colour shift may be observed upon tilting of the security device.
Photonic crystals are an alternative structured material which can exhibit effects useful to security applications. Such effects can be similar to those generated by thin films and liquid crystal materials, and are generated by way of the interaction of electromagnetic radiation with the material having periodically varied refractive index in two or three dimensions. Reflection may occur over a range of wavelengths with strong dependence upon angle of incidence/propagation and the periodicity of the refractive index variation. In effect, certain wavelengths will be reflected and others transmitted depending upon material properties encountered by incident light. Examples of such effects occurring in nature is the colour shimmering present in opal gemstones, or the coloured wings of a butterfly.
The specification identifies that photonic crystals have been used to generate angular dependent coloured refection in patent applications WO 2003/062900 and US 20050228072, and notes that the use of photonic crystals in security devices has been limited to a simple angular dependent colour reflection observed by tilting of the device. The specification adds that there is no teaching in the art of how to incorporate such devices into security documents such that other effects observable in photonic crystals may be used to validate documents. It follows that the object of the present invention is indicated as being improvement of the security devices described in the prior art.

The claims

The specification indicates that the invention involves a realisation that photonic crystals with modifiable properties as a result of an external stimulus provide great advantage in the field of optically variable security devices. The specification ends with 22 claims, whereby claim 1 is the only independent claim and represents this realisation.
1. An optically variable security device for use with a security document, the optically
variable security device comprising a photonic crystal which, upon receipt of incident
light, generates a first optical effect, and which, when the device is subjected to an external stimulus, generates a second optical effect that is different from the first optical effect, wherein at least one of the first and second optical effects is an optically variable effect observable over a set of directions and caused by the light being selectively reflected or transmitted by the crystal.
2. An optically variable security device according to claim 1, wherein the said first and second optical effects comprise first and second optically variable effects respectively, wherein the second optically variable effect is observable over the said set of directions wherein, when the device is illuminated with a white light source, the first and second optically variable effects are colour effects, and wherein the first optically variable effect is a first angularly dependent colour effect and the second optically variable effect is a second angularly dependent colour effect, that is different from the first.
3. An optically variable security device according to any of the preceding claims, wherein the external stimulus is one or more of a mechanical, thermal, chemical, electrical, magnetic, electromagnetic or ultrasonic stimulus.

4. An optically variable security device according to any of the preceding claims, wherein the application of the stimulus causes a modification in the periodic spacing of one or more refractive entities within the crystal structure, or wherein the application of the stimulus causes a modification in the refractive index of one or more refractive entities within the crystal structure.
5. An optically variable security device according to any of the preceding claims, wherein the photonic crystal is arranged such that the effect of the stimulus upon the crystal is reversible upon removal of the stimulus or upon application of an opposite stimulus.
6. An optically variable security device according to any of the preceding claims, wherein the photonic crystal structural parameters are different at different positions within the crystal so as to produce different corresponding optical properties, or wherein the photonic crystal is formed from two or more crystal structures having different optically variable properties.

7. An optically variable security device according to any of the preceding claims, further comprising a scattering layer.
8. An optically variable security device according to any of the preceding claims, further comprising an optically absorbent material provided as one or more layers applied to the device.

9. An optically variable security device according to any of the preceding claims, wherein the device further comprises a metallised layer and wherein the metallised layer is selectively demetallised at a number of locations.

10. An optically variable security device according to any of the preceding claims, wherein the device is arranged to be machine-readable.

11. An optically variable security device according to any of the preceding claims, further comprising nanoparticles within the crystal structure.

12. An optically variable security device according to any of the preceding claims, wherein the device is arranged to produce a latent image which is selectively visible according to the viewing angle.

13. An optically variable security device according to any of the preceding claims, wherein the surface of the photonic crystal is embossed with raised structures.

14. An optically variable security device according to any of the preceding claims, wherein the crystal is an elastic photonic crystal and wherein the mechanical properties of the elastic photonic crystal are arranged to be different in respective localised regions.

15. An optically variable security device according to any of the preceding claims wherein, following the removal of the stimulus, the effect of the stimulus upon the crystal remains for a delay period.
16. A security document comprising a security device according to any of the preceding claims wherein the security device is adhered to or substantially contained within the security document.

17. A security document according to claim 16, wherein the device is embedded within a document window so as to provide crystal surfaces for receiving incident light on each of opposing faces of the document.

18. A security document according to claims 16 or 17, wherein the security device is supported upon a transparent layer.

19. A security document according to any of claims 16 to 18, wherein the security device is provided as a projection such that it or a part attached to the device may be grasped by a user and elastically deformed so as to apply the stimulus.

20. A security document according to any of claims 16 to 19, wherein the security device is provided in a form selected from the group of a security thread, a security fibre, a security patch, a security strip, a security stripe or a security foil.
21. A security document according to any of claims 16 to 20, wherein the security document is one of a bank note, cheque, passport, identity card, certificate of authenticity or fiscal stamp.

22. The security device according to claim 1 or the security document according to claim 16, substantially as hereinbefore described with reference to the accompanying drawings.

Subsection 40(3): Construction and Clarity

While the rules of construction for an Australian patent specification are well summarized in Decor Corp v Dart Industries 13 IPR 385, recently the correct application of these rules 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."

The context of the specification may imply a limitation on the scope of the claims. In International Business Machines Corp v Commissioner of Patents (1991) 22 IPR 417 the specification related to computer graphics, but the claim made no specific reference to a computer environment. Burchett J found that:
"When the present specification is read, the whole of the context rises up to insist that claim one is talking about the operation of computers. Almost the first words of the specification inform the reader that the invention 'relates to computer graphics and more specifically to a method and apparatus for generating curves on computer graphic displays'. The recital of the prior art reinforces the clear impression thus conveyed from the beginning of the document."
I also note that the requirement that the claims are clear is understood to be satisfied if a person could ascertain "whether or not what he proposes to do falls within the ambit of the claim" (Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59).
Claim 3
The opponent submitted that claim 3 is not clear because it is not clear how an ultrasonic stimulus can alter the photonic crystal such that a different optical effect can be produced. Firstly, the issue raised by the opponent does not appear to be one of clarity. The claimed feature simply requires the use of an ultrasonic stimulus to achieve the claimed effect. The person skilled in the art would have no difficultly in ascertaining whether what he proposed to do falls within the ambit of these features. Furthermore, as noted by the opponent’s expert Dr Vladimir Kitaev in evidence in support at [87], while ultrasonic stimulation is potentially damaging to a photonic crystal:
“…application of small amplitudes of ultrasonic frequencies falls under mechanical stimulus.”

Therefore, I find claim 3 clear in that the person skilled in the art would understand the scope of the claim with reference to the use of ultrasonic stimuli.
Claim 1: An optically variable security device for use with a security document
While no issue as to clarity was raised in regard to the preamble to claim 1 it was clear from the submissions that an important aspect of construction was the proper interpretation of the claim’s preamble.
In general “for use” claims are limited only to the extent that the subject apparatus must be suitable for the specific purpose. In other words, such claims are merely indicative of the environment in which the apparatus is intended to be used and do not limit the use to the particular environment. In this case, proper construction of the phrase in question requires consideration of the functional requirements of an optically variable security device in the environment of a security document. It is also necessary to qualify the limitation placed by the definition of the device of claim 1 as a “security” device.
I understand the opponent’s submissions in relation to the preamble to claim 1 to be rather general in that a security device is to be construed as a device that is used for security. The opponent correctly points out that the feature “for use with a security document” does not require the device to be used in security documents, noting that it only needs to be suitable for said use. The opponent did not proceed to place an interpretation on what functionality might be required by the claimed security device such that it is suitable for the claimed use.
The applicant submitted that while the term “security device” has a plain construction as a device having security application, in the context of the specification the security device is limited to:
“…a distinct element that confers anti-counterfeiting properties to the thing it is included in…”
“…as its plain meaning a device which itself provide[s] security from forgery…”
Relevant to the construction of the term is the fact that the “security device” is characterised in the claim as being an “optically variable” security device, or OVD (Optically Variable Device). OVDs, by the way in which they exhibit optical effects such as movement or colour change (e.g. colour change with viewing angle), cannot be photocopied. In this regard an optically variable security device is a device that is inherently difficult to reproduce or copy, and thus useful as an anti-counterfeiting measure.
Importantly, the security device of claim 1 is characterised only as a photonic crystal having the two effects described in the claim. On this basis, it appears appropriate to consider that the presence of the word “security” as characterising the device, only imports a functional capability of use in security application, this being a feature provided by an optically variable device as claimed. I see no basis to import any further technical limitation due to the presence of the word “security”. Thus I construe the apparatus that is the subject of the claim as an optically variable device capable of use in security application.
While the phrase “for use with a security document” does not in itself appear to necessarily confine the optically variable security device to being capable of forming part of a security document, I consider that the context of the specification points clearly to this construction. All of the embodiments discuss an optically variable security device operating as an intrinsic security aspect of a security document, as opposed to a security device suitable for use extrinsically with a security document. There is no discussion in the specification of any use of an optically variable security device with a security document where the device is not physically connected to the document in some way and providing security to the document. The specification only implies such an intrinsic possible use. Therefore I consider the requirement that the device be suitable for use with a security document is to be construed as imposing a simple technical limitation that the optically variable security device must be capable of attaching to, forming part of, or being embedded within, a security document such that it may act as a security aspect of a document.

Novelty

For the purposes subsection 7(1) of the Patents Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of prior art information within the prior art base. It is well established that the general test for anticipation is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20]; [1977] HCA 19; 137 CLR 228 at 235:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement.”

This test is satisfied if the alleged anticipation discloses all of the essential features of the invention as claimed (Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40 at [19]; [1990] FCA 40; 16 IPR 545 at 549). To meet this requirement, the prior art must contain “clear and unmistakable 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).
Regarding the requirement of a clear and unmistakable direction, Australian courts have often cited with approval the words of the UK Court of Appeal in The General Tire case which states at pages 485-486:

"If ... the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee's claim, but would be at least be as likely to be carried out in a way that would not do so, the patentee's claim will not be anticipated…
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…”

I also note that an alleged anticipation need not explicitly disclose all of the essential features of the claimed invention. In this regard, a disclosure may be implicit as discussed in Bristol-Myers Squibb Company v FH Faulding & Co Ltd [2000] FCA 316; 46 IPR 553 at 576:

“What all authorities contemplate, in our view, is that a prior publication, if it is to destroy novelty, must give a direction or make a recommendation or suggestion which will result, if the skilled reader follows it, in the claimed invention. A direction, recommendation or suggestion may often, of course, be implicit in what is described and commonly the only question may be whether the publication describes with sufficient clarity the claimed invention or, in the case of a combination, each integer of it.”

Similarly, the Full Court in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70 at 181 said (citing Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40):

“If the prior art discloses some but not all integers of a claimed patent to a product, such as a combination, there is anticipation if the skilled addressee would add the missing information as a matter of course and without the application of inventive ingenuity or undue experimentation.”

The following documents were pressed by the opponent in its submissions as depriving the claimed invention of novelty:

·     D1 (exhibits JRG-1, VK-3 and BAH-2): Arsenault, A. C et al., ‘From colour fingerprinting to the control of photoluminescence in elastic photonic crystals’, Nature Materials, March 2006, vol 5, pages 179-184
·     D2 (exhibits JRG-2, VK-14 and BAH-8): WO 2003/062900 A1 (Nanoventions, Inc.) 31 July 2003
·     D3 (exhibits JRG-3, VK-15 and BAH-9): US 2005/0228072 A1 (Winkler et al.) 13 October 2005
D1: Arsenault

Document D1 is a scholarly article published in the journal Nature Materials which discusses research involving the creation of large-area films of porous elastomeric photonic crystals (EPCs). These crystals can be compressively-decompressively cycled in order to reversibly shift the position of the photonic band structure over a large wavelength range. Such EPCs can be used for imaging that is pressure and time sensitive with a particular embodied example being the obtainment of colour fingerprints with high accuracy. The applicant raises a number of points as to features of claim 1 it alleges are not disclosed in D1. Firstly, the applicant submits:
“Arsenault concerns a device for imaging fingerprints. It does not provide security itself -this being provided by the finger of the user. A skilled person would understand that the security device in the context of the present invention provides the security itself due to the difficulty in replicating the claimed effects. It is not apt to interpret the term “security device” in the claims in any other way.”

In accordance with my construction earlier, I do not consider that there is a requirement in the construction of claim 1 that the security device be actually providing security “itself” to an article. In this regard, it is only necessary to construe the security device in a manner whereby it possesses the capability of providing security. This is disclosed by way of the application of the device in fingerprint imaging. The EPCs discussed in document D1 are optically variable security devices because according to the examples of D1 they operate in the visible wavelength range (figure 2c and figure 3), have visible stop-bands (page 180, column 2, lines 13-15), and they naturally possess the relevant property of photonic crystals being the directional variability of effects which is discussed on page 179, column 1, lines 1-4 as follows:

“In photonic crystals (PCs), strong scattering and destructive wave interference led to a modification of the photon density of states in particular energy regions and along certain crystallographic directions”.

Further submissions by the applicant as to the disclosure of document D1 were that:
“…Arsenault does not disclose … a security device for security documents (such as banknotes) and does not disclose the added dual optical effects, at least one of which is a variable optical effect. That is, while it may be accepted that an optical effect is created by external stimulus of pressure of the finger, there is no description of there being any optical effect prior to that pressure being applied nor whether either of the effects (if they both are present) are variable.”

As discussed above, I interpret the limitation of the device being “for use with a security document” as capability to attach to, form part of, or embed within a security document such that it may act as a security aspect of a document. The EPCs of D1 are discussed as being films which can be deposited onto any substrate (including polymer substrates) drawn through water (page 180, column 1, lines 2-8). These EPC films are formed in a manner allowing reversible structural and optical responses to compressive forces (page 180, column 1, lines 9-10) such as by pressing with a finger (figure 3). In this regard the films are a solid material having a size and form that is inherently capable of for example, attaching to a polymer substrate of security document (eg, via some appropriate form of adhesion) such that it may provide an aspect of security to the document.
Remaining features of claim 1 are also disclosed. In this regard, and contrary to the submission of the applicant, a first optically variable effect is generated in transmission or reflection upon receipt of incident light, this being the inherent optical effect of an optical photonic crystal described at page 179, column 1, lines 1-4. The feature of an external stimulus generating a second optical effect different to the first is disclosed by way of figures 2c and 3 (and related discussion on page 180) which shows modification of normal incidence reflection spectra or colour images measured upon compression of the EPC film. For similar reasons to the first optical effect this second effect will also be optically variable.
Therefore, document D1 discloses all of the features of claim 1 rendering the claim not novel. Omnibus claim 22 also lacks novelty for these reasons. The omnibus claim is directed to the device of claim 1 “substantially as hereinbefore described with reference to the accompanying drawings”. The drawings relate to an elastic photonic crystal material, this being disclosed in D1.
I also find dependent claims 2-6, 10, 11 and 14 are disclosed in document D1.
Claim 2: The discussion above in relation to claim 1 introduces two different optically variable effects that are inherently angularly dependent colour effects that would inevitably result from illumination with a light source such as white light.

Claim 3: The external stimulus is mechanical deformation with a finger. The document also generally discusses compression of the film (figure 2a and page 179, column 1, line 9).
Claim 4: The deformation causes modification of the spacing of the crystal structure (figure 2a).

Claim 5: The effect of the stimulus is reversible by way of the elastomeric photonic crystal returning to its original shape when the deformation is removed (page 180, column 2, lines 10-17).
Claims 6 and 11: The document also discloses inclusion of quantum dots (nanoparticles) within the crystal structure (page 179, column 1, lines 14-15; page 181, column 1, lines 1-4; figure 4). By this the document discloses different photonic crystal structural parameters at different positions within the crystal to produce different optical properties.
Claim 10: The specification applies a meaning to the term machine-readable stating at page 18 lines 30-31 that “Security devices comprising photonic crystal materials are inherently machine-readable due to the wavelength selectivity of the photonic crystal materials”. On this basis I find that claim 10 is not novel.
Claim 14: The photonic crystal is an elastic photonic crystal that is locally compressed by a finger to produce localised mechanical properties (figure 3).

The opponent also submitted that claims 12 and 19 are disclosed in document D1.
In regard to claim 12 the opponent suggested that the device of D1 is arranged to produce a latent image which is selectively visible according to the viewing angle by way of the phrase on page 179, column 1:
“Within a photonic stop-gap, light emission can be markedly supressed”.
I see no reference to the formation of a latent image. A photonic stop-gap appears to relate to the concept of forbidding propagation of certain frequencies in certain crystallographic directions (page 179, column 1, lines 24-28). I do not see a basis for equating this with a latent image. The claim is novel.
Regarding claim 19 the opponent submitted that the security device is provided as a projection as it must project in order for it to be pressed. The claim is appended to claim 16 which defines a security document comprising a security device according to any preceding claim. There is no disclosure of a security document in D1. Therefore this claim and claim 16 are novel.
I also find no disclosure of remaining features of claims 7-9, 13, 15-18, 20 and 21 in document D1.
In conclusion I find claims 1 and 22, and dependent claims 2-6, 10, 11 and 14 are not novel in view of document D1.
D2: WO 2003/062900
Document D2 describes light control materials for displaying colour images having microstructures either on a surface or within a material which reflect a selected colour or bandwidth of colours in accordance with its structure (see abstract). In general, document D2 describes a range of photonic crystal structures that generate angular dependent coloured effects. In a relevant embodiment, photonic crystal structures are formed in a polymer as part of an imaging substrate (figure 21). Figure 21 is reproduced below to aid in discussion of document D2 as it forms the basis for the opponent’s assertion of a lack of novelty.
An imaging substrate 210 includes a base 212 which may be black, white or coloured, a photonic crystal foam 211 incorporating substantially uniform gas filled lattice inclusions 208, a polymer lattice substrate 207, and a transparent film upper surface 214. Heat is applied to a region of the imaging substrate 210 causing the photonic crystal foam and lattice substrate to expand. The foam/substrate hardens in an expanded state. Expansion increases the crystal periodicity and thus modifies the reflectivity profile of the lattice substrate.
The applicant submitted that:
“…there is no clear disclosure of a device which has the two optical effects which differ and at least one of which is an optically variable effect as required by claim 1.”
Firstly, the claim does not require that the device is not permanently modified by the external stimulus. Here figure 21a shows a first photonic crystal structure that upon receipt of incident light will generate a first optical effect. Figure 21b shows a second photonic crystal structure that will have a second optical effect, this structure obtained by external stimulus of the first photonic crystal structure. While not discussed in regard to this particular embodiment, a corresponding 3-D hexagonal photonic crystal arrangement is discussed in a similar embodiment at page 28 lines 1-3 (albeit in respect of an optical fibre device) which states that such structures will provide selective colour effects over a wide range of viewing angles and illumination. On this basis, and with knowledge of the properties of photonic crystals, I consider the person skilled in the art would consider such optical variability an equally present property of the photonic crystal structures of figure 21.
I also consider that the imaging substrate of figure 21a possesses the inherent capability of use in security application, and is therefore an optically variable security device as required by claim 1. This is due to the very nature of the optically variable effects present in the photonic crystal foam which make the imaging substrates of figure 21 difficult to reproduce. Additionally, the structure of figure 21a forms an imaging substrate involving a coloured, white or black base, crystal substrate and transparent covering film, and I see nothing to prevent it being attached in some way to a security document such that it would confer an aspect of security to such a document. It appears to possess size characteristics by way of being a substrate that make it suitable for the claimed purpose.

In regard to this embodiment the applicant makes the further submission:
“…where Steenblik is discussing the application of heat to photonic crystals, it does so in the context of the manufacture of the security device and not its final state:
(a) see Steenblik page 30 lines 6 to 22 which plainly discussed the creation of the imaging substrate the subject of an embodiment of that application;
(b) see also Steenblik page 28 lines 12 to 29 where a region of the photonic crystal
is heated to produce the final result required for the security device.”
I interpret this submission to suggest that the external stimulus is not being applied to a security device per se, and that the item identifiable as a security device is figure 21b. However, as discussed above, I consider the device of figure 21a falls within the scope of an optically variable security device for use with a security document as required by claim 1. Figure 21a discloses an optically variable device which upon receipt of light generates a first optical effect. It is clear that when the device of figure 21a is subject to an external stimulus, a second optical effect is observable (figure 21b). Relevantly, claim 1 does not include any limitation that the effect of the stimulus be reversible. I also make reference to claim 5 which applies such a limitation to claim 1.
Therefore, document D2 discloses all of the features of claim 1 rendering the claim not novel.
I also find dependent claims 2-4, 6-8 and 10 are disclosed in document D2.
Claim 2: The discussion above in relation to claim 1 introduces two different optically variable effects that are inherently angularly dependent colour effects that would inevitably result from illumination with a light source such as white light.

Claim 3: The external stimulus is heating with, for example, an infrared diode laser (page 28 line 18).

Claim 4: The deformation via heating causes modification of the spacing of the crystal structure (figure 21).

Claim 6: Figure 21b discloses an optically variable security device with different structural parameters at different locations so as to produce corresponding optical properties. This device itself is characterised by a first optical effect upon receipt of incident light wherein it is intrinsicly capable of further modification to produce a second optical effect upon being subject to laser heating as per figure 21a.
Claim 7: The device further comprises a scattering layer (white base 212).

Claim 8: The device further comprises an optically absorbent material applied to the device (black/coloured base 212).

Claim 10: This device is machine-readable as discussed in respect to document D1.

I find no disclosure of remaining features of claims 5, 9 and 11-22 in document D2.
In conclusion I find claim 1 and dependent claims 2-4, 6-8 and 10 are not novel in view of document D2.

D3: US 2005/0228072

Document D3 describes composite materials having an optical effect comprising a moulding essentially formed of core/shell particles whose shell forms a matrix and whose core is essentially solid (abstract). The structure of core/shell particles forms a photonic crystal ([0016]). The materials exhibit angle-dependent colour effects and have freely adjustable mechanical properties by way of connection to a base layer which may be metal, glass, ceramic, wood or polymer for example (abstract, [0020], [0021]).
In regard to the adjustability of mechanical properties, paragraph [0024] discusses the way in which the properties of the photonic crystal may be adjusted by connection to a rubber base layer:
“The composite materials according to the invention combine the advantages of mouldings essentially consisting of core/shell particles with easy processability and the superior mechanical properties of the material connected to the moulding. If the connected material is a rubber polymer, the composite exhibits high elasticity and tear strength of the rubber in combination with the viewing angle-dependent colour effect of the moulding. Composite materials of this type having rubber-like properties are suitable for the production of sensors for the detection of the action of mechanical force and sensors having an optical effect. The colour effect that can be observed is additionally dependent here on the state of elongation of the rubber-like support material.”

Paragraph [0073] also discusses mechanical properties of the photonic crystal being modified in a manner to generate optical effects:
“The shell here can consist either of thermoplastic or elastomeric polymers. Since the shell essentially determines the material properties and processing conditions of the core/shell particles, the person skilled in the art will select the shell material in accordance with the usual considerations in polymer technology. In particular if movements or stresses in a material are to result in optical effects, the use of elastomers as shell material is preferred. In mouldings according to the invention, the separations between the cores are changed by such movements. The wavelengths of the interacting light and the effects to be observed change correspondingly.”
With reference to this disclosure the applicant submits that:
“…it is not entirely clear what is meant at paragraph [0073] and whether a second optical effect caused by external stimulus is what is being described.”
I do not see any basis for doubt as identified by the applicant as to what is disclosed. The moulding of core/shell particles is clearly disclosed as a photonic crystal with optically variable effects ([0016]). Such a photonic crystal thus possesses a first optically variable effect. By constructing the shell of an elastomeric polymer and causing stresses (mechanical stress being an external stimulus) to the photonic crystal, the separation between the particle cores of the photonic crystal will be changed. It is a property of photonic crystals that upon changing the periodic structure, the interaction of light with the crystal will be modified, thereby producing a second optically variable effect. Thus disclosed in document D3 is a photonic crystal comprising the effects as claimed in claim 1. Remaining to consider is the preamble of the claim.

Relevant to the claim’s preamble, the applicant submits that:
“…it is only “if” it is desired to have movements or stresses in a material which will result in “optical effects” that elastomers as a shell material is preferred.”
…
“…it is certainly not taught or recommended that such a feature be used in security devices. Indeed, there is no express or implied mention in Winkler that the application of an external stimulus to produce a second optical effect is relevant to the use of photonic crystals in a security device. The only mention of “security features” in Winkler is much later in the specification at [0162]. There it is said:
“The composite materials can be incorporated into surfaces such as smart cards, banknotes, OEM products, etc, as security features. The security feature is in these cases the viewing angle-dependent reflection or transmission colour, i.e. the angle- and wavelength-resolved spectrum of the composite materials.”
There is nothing to suggest the preceding “composite materials” discussed in Winkler have anything other than an optical effect where “the effect is opalescence in the visible region, i.e. a change in the observed colour impression as a function of the viewing angle” as defined at [0016]. In any event, paragraph [0162] makes clear that it is only the use of such materials (ie, ones where the effect is limited to the viewing angle dependent reflection or transmission of colour) that is contemplated for “security features” in banknotes etc – not a change in effect caused by external stimulus.”
…
“Finally, it is not accepted that the passing reference to a “security feature” in paragraph [0162] of Winkler contemplates a “security device” within the meaning of claim 1, let alone the features discussed above.”
In regard to the last submission of the applicant I refer to the construction applied earlier to the preamble of claim 1. The preamble is to be construed in effect as no narrower than an optically variable device capable of attaching to, forming part of, or being embedded within, a security document such that it may act as a security aspect of a document. I see no further limitation due to the presence of the word “security” than limiting the subject of the claim to an optically variable device capable of use in security application.
Furthermore and aside from the disclosure of paragraph [0162] of D3, I consider that the properties of the composite materials disclosed make them inherently capable of attaching to, forming part of, or being embedded within, a security document such that the composite material may act as a security aspect of a document. I refer to paragraphs [0020] and [0021] which discuss the connection to a further layer which may be a polymer, and paragraph [0024] which discusses attachment to rubber. I also make reference to paragraph [0093] which discusses the production of elastically deformable coloured films:
“For certain applications, such as, for example, for the production of coatings or coloured films, it is favourable, as already stated above, for the polymer material of the matrix phase-forming shell of the core/shell particles according to the invention to be an elastically deformable polymer, for example a polymer having a low glass transition temperature. In this case, it is possible to achieve a situation in which the colour of the moulding according to the invention varies on elongation and compression.”
Thus, what is clearly disclosed is a photonic crystal film which is elastically deformable to produce different optically variable effects. It is clear that upon attachment to a layer (such as metal, wood, ceramic, glass or polymer), the film adopts the mechanical properties of the layer. In this way the elastomeric photonic crystal of D3 is inherently capable of attaching in some way to a security document (which may itself for example be made of a polymer) such that optically variable effects may observed in a manner that provides security to the document.
Therefore, document D3 discloses all of the features of claim 1 rendering the claim not novel. It follows that claim 22 is also not novel.
There is also a further embodiment in document D3 which discloses the claimed invention. In this regard paragraph [0027] discloses the inclusion of a contrast material, usually a pigment with produces a second optical effect, in the moulding which predominantly consists of core/shell particles. At paragraph [0030] it is noted that a pigment may be a fluorescent or phosphorescent pigment. On this point, the applicant argued that the pigment is not part of the photonic crystal and therefore the second optical effect is not generated by the photonic crystal as required by the claim.
I do not consider the applicant’s submission correct. Paragraph [0016] states that the mouldings according to the invention are photonic crystal. On this basis it is clear that the core/shell particles are considered to form the predominant structure of the photonic crystal. This photonic crystal may be further enhanced using contrast materials within the predominant crystalline structure as discussed at [0027]. It is entirely consistent with the understanding of a photonic crystal and the properties they exhibit (see for example paragraph [11] above) that a photonic crystal is not limited to only the period crystalline structure which generates optical properties. A photonic crystal is the entirety of a composite material which generates particular angular dependent optical effects and may include additives/dopants/pigments etc.
With reference to claim 1, a first optically variable effect in the photonic crystal (which comprises core/shell particles and a pigment) is the effect of the core/shell particles alone. The pigments are externally stimulated by light and will therefore produce a second optical effect via fluorescence or phosphorescence. As with the discussion above involving elastomeric photonic crystals, these photonic crystals are equally suitable for the claimed use and fall within the scope of a “security device” as required by the claim.
I also find dependent claims 2-6, 10, 11, 13 and 15 are disclosed in document D3.
Claim 2: The discussion above in relation to claim 1 and the disclosure of an elastomeric photonic crystal introduces two different optically variable effects that are inherently angularly dependent colour effects that would inevitably result from illumination with a light source such as white light.
Claim 3: The external stimulus is mechanical deformation ([0024], [0093]) or light ([0030] in regard to the stimulation of fluorescent or phosphorescent pigments).

Claim 4: Modification of the periodic spacing of refractive entities is caused by way of change in the separation of cores in the composite as a result of stressing movements ([0073]).
Claim 5: The effect of the stimulus is reversible due to the elastomeric properties of the photonic crystal or by way of removal of light stimulating fluorescence or phosphorescence.
Claim 6: Different optical properties are produced by different structural parameters at different positions of the photonic crystal by way of two structural elements being core and shell material.
Claim 10: The device is machine-readable as discussed in relation to document D1.

Claim 11: Nanoparticles are included in the matrix phase of the mouldings ([0066]).

Claim 13: The surface of the photonic crystal is embossed with raised structures using compression moulds to create surface structuring ([0057]).
Claim 15: Phosphorescence inherently involves a decay phenomenon that results in a delay period.

The opponent also submitted that claims 7, 8, 14, 16, 18, 20 and 21 are disclosed in document D3.
Regarding claim 7 the opponent submitted that a scattering layer is inherently present due to the application of surface structuring to reduce diffuse scattering ([0026]). While scattering may be present as a result of the photonic crystal itself, this does not amount to the presence of further layer for scattering as I construe is required by the claim.

Regarding claim 8 the opponent submitted that an optically absorbent material is disclosed by way of a contrast material included in the moulding ([0027], [0028]). While this appears to be so, the claim requires a material be provided as a layer applied to the device. Such a layer is not disclosed.
Regarding claim 14 the opponent submitted that the elastic photonic crystal moulding can have different mechanical properties, eg ‘the colour varies on elongation and compression’ (paragraphs [0014] and [0093]), and that it is inherent that these could be provided in localised regions. While the document discloses the potential to compress and elongate the photonic crystal, there is no disclosure of localisation of the properties of the crystal as required by the claim.
Regarding claim 16, I accept the applicant’s submissions identified above at [61] that there is no clear and unmistakable direction to the claimed feature. Claims 18, 20 and 21 append to claim 16 and are therefore also novel.
I also find no disclosure of remaining features of claims 9, 12, 17 and 19 in document D3.
In conclusion I find claims 1 and 22, and dependent claim 2-6, 10, 11, 13 and 15 are not novel in view of document D3.

Inventive Step

The test for obviousness was provided by Justice Aicken in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12 at [45]; 148 CLR 262 at 286 as follows:

“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 [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]?”

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.

In determining the problem or ‘starting point’ for considering inventive step, I am mindful of the words of the majority of the Full Court in AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99 at [202]-[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.”

In other words, the Full Court has stated that when formulating the problem it is not permissible to incorporate information that is not available to the person skilled in the art as either common general knowledge or information available under section 7(3)
The problem
The specification at page 3 identifies that photonic crystals have been used to generate angular dependent coloured refection in patent applications WO 2003/062900 and US 20050228072, and notes that the use of photonic crystals in security documents has been limited to a simple angular dependent colour reflection observed by tilting of the device. The specification adds that there is no teaching in the art of how to incorporate such devices into security documents such that other effects observable in photonic crystals may be used to validate documents. It follows that the object of the present invention is indicated as being improvement of the security devices described in the prior art.
While the opponent did not make any specific submissions as to the problem solved by the claimed invention, the applicant suggested that the problem should be broadly considered to be the “improvement of security devices”, or the “development of new features” of security devices, particularly those suitable for use in security documents. The basis for this appears to be the formulation by the applicant’s expert Mr Neil William Holland of what he considers the problem to be. In his declaration filed as evidence in answer, at [27] Mr Holland focuses upon the last line of the above relevant discussion at page 3 of the specification in formulation of his problem stating:
“This suggests to me that the “object” of the invention may be to provide security devices that are yet more difficult to replicate…”
Such a broad problem ignores the context discussed in the specification in relation to prior art inventions that use basic effects of photonic crystals to provide security to security documents. In particular, the relevant part of the specification suggests a desire to incorporate photonic crystals into security documents in ways other than simple angularly dependent effects. Thus I consider the problem to be the improvement of the use of photonic crystals in security devices for security documents beyond simple angular dependent coloured reflection.
Furthermore, in accordance with the findings in AstraZeneca AB v Apotex Pty, I do not consider there to be any information forming part of the problem that is not s7 material. It is clear that photonic crystals are known to have been used in security devices and in particular in security documents, these photonic crystals having simple angular dependent optical effects, and that a photonic crystal may be arranged to achieve effects beyond mere angle dependent reflection/transmission (see documents D1-D3). Thus it appears appropriate to consider obviousness in light of the problem I have identified.
The hypothetical person skilled in the art
In Root Quality v Root Control Technologies Pty Ltd (2000) 49 IPR 225 at [71], Finklestein J held that the skilled addressee would have the following characteristics:
“In Catnic Lord Diplock said (at 242) that skilled addressees are “those likely to have a practical interest in the subject matter of [the] invention”. A variety of people may have that interest. There are those who might wish to make or construct the invention, those who may wish to compound the invention and those who may wish to use the invention.”

In a broad sense the skilled addressee would be a person with a practical interest in the design or manufacture of optically variable security devices for security documents. However, it is useful to more clearly characterise what type of people this would include. In this sense, the skilled addressee can be equated with a team of people that includes: a scientist or technician involved in the research or design of such security devices; a security document/counterfeiting expert involved in the analysis/testing of such devices; and a manufacturer of security devices for security documents.
There was contention between the parties as to which of the declarants in the present opposition constituted a person skilled in the art, in addition to argument over preference that should be placed upon particular expert evidence. Of particular relevance is the contention over whether experts Dr Kitaev, Mr Holland, and Dr Hardwick can be considered as skilled addressees for the purpose of considering obviousness.
I have reviewed the backgrounds of these experts as provided in their evidence and it is clear that Mr Holland and Dr Hardwick may be considered skilled addressees. Mr Holland is a person with experience in forensic identification and testing of counterfeit documents, and in his current role as principal of Scientific Document Services Pty Ltd he provides advisory expertise in relation to security document protection (NWH at [3]-[10]). Dr Hardwick was a Technical Development Manager who led a team responsible for polymer banknote production, and is now a consultant to central banks and security printers advising on aspects of banknote scientific research and counterfeit deterrence (BAH at [1]-[6]). Both of these experts represent a person who would have a clear practical interest in the relevant problem at the priority date.
The background of Dr Kitaev is less closely related to the identified problem. Dr Kitaev is a person skilled in the field of security application of photonic crystals which is much more broadly defined as a field which includes major applications such as optical telecommunications, optical telecommunication devices and sensing (VK at [2], [10]). He has been involved in research work related to core/shell particles and identifies that he was aware that such particles had security application and could be used in security devices related to the protection of security papers (VK at [13], [14]). I consider that Dr Kitaev’s evidence may be considered that of a person skilled in the art of photonic crystals suitable for use in security documents.
To the extent that I prefer the evidence of one of the experts I will discuss this where necessary.
The prior art base (ascertain, understand and regard as relevant)
The opponent relies on documents D1-D3 to establish obviousness by submitting that each of the claims lacks an inventive step over any of these documents.
According to subsection 7(3), documentary information relevant the assessment of inventive step must be information that the person skilled in the art, before the priority date of the claims, could be reasonably expected to have ascertained, understood and regarded as relevant.

In regard to document D1, the applicant submitted that:
“There is no proper evidence upon which to find that the Arsenault paper would have been ascertained by the hypothetical person skilled in the art as at the priority date. It was published in a paper not referable to the Field and only just prior to the priority date and was only drawn to the attention of Dr Hardwick in a fashion where it is not possible to ascertain how the Bank of Canada came to know of it.”
With reference to the knowledge of the document before the priority date, the opponent points to evidence of Dr Hardwick and Mr Power (at [9] and [8] respectively of BAH and NWH) which shows these experts in fact knew of this document.
In regard to the patent documents (D2 and D3) the applicant submitted only in respect of D3 that there is similarly no proper basis to conclude that the document would have been found. In regard to searching of patent documents and the identification of D3 the applicant submits that:
“There are no key words in the title or abstract of the patent which would have led the person skilled in the art to find the document or, even if it did show up in a search, the search would have been so wide so as to discount it reasonably being picked out for further consideration. It is pure speculation whether this document would have been
ascertained.”

Firstly, in regard to the submissions of the applicant, I note that the test for ascertainability is not whether the person skilled in the art would have found the document, but whether the person skilled in the art could be reasonably expected to have found the document. Therefore, it is not necessary for the evidence to demonstrate that the person skilled in the art would have taken a particular action to in fact find a document. Relevantly, the concept of ascertaining documents in the context of a diligent searcher seeking solutions to a problem is well summarised in Rohm and Haas Company v Nippon Kayaku Kabushiki Kaisha and Sankyo Company, Limited[1997] APO 40 where the Delegate of the Commissioner stated with reference to patent documents:
"A document would be ascertained if it was published in such a manner or form that it could reasonably have been expected to be found by a person skilled in the art. A patent document dealing with the same technical issues would prima facie have been ascertained by a person skilled in the art.”

With the above in mind, I do not consider the particular identified evidence of the opponent in regard to document D1 to be particularly useful in demonstrating ascertainability. The fact that an expert in this case knew of the document falls short of demonstrating that a hypothetical skilled addressee, with the identified problem in mind, could be reasonably expected to have found the document in question.
Nevertheless, document D1 is in the technical field of photonic crystal use in security application. While not explicit in its suitability for security documents, the technical field of the document is one which addresses the identified problem. The document is from a high impact, mainstream and readily accessible journal (Nature Materials). Both Mr Holland’s and Dr Hardwick’s evidence suggest to me that a person skilled in the art could be reasonably expected to search non-patent literature as the experts discuss awareness of the importance and relevance of scientific journals, and participation in academic conferences (NWH at [30] and BAH [29], [30]). I find the document could be reasonably expected to have been found by the skilled addressee.

100.In regard to patent document D3, the applicant’s submission places emphasis on the lack of overlap of keywords between the application and D3. However, terms and concepts closely related to the formulated problem can be found in the abstract of D3 such as “viewing angle-dependent colour effect”, “adjustable properties”, “core/shell particles” and “difference between refractive indices”. The person skilled in the art could reasonably be expected to search related terms. I also note that there is reference in the early part of the description to photonic crystals (at [0016]). Further, each of the patent documents deal with technical issues directly relevant to the identified problem. Dr Hardwick discusses the practice in the field of conducing patent searches (BAH at [29]) similarly to Mr Power (GFP at [4], [5]). I find that documents D2 and D3 are documents that could have been ascertained as required by s7(3).
101.Further, I see no reasons why documents D1-D3 would not have been understood or considered relevant to the problem. Thus all of these document are part of the prior art base for consideration of inventive step.
Was the invention obvious?
Common General Knowledge
102.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.”
103.Reviewing the evidence I am satisfied that the following relevant information formed part of the common general knowledge before the priority date of the application:
·The use of liquid crystals materials or thin films to generate angularly dependent colour effects in security documents (BAH [14]-[16])
·That photonic crystals existed and exhibit similar angularly dependent optical effects (specification page 1 line 20 to page 2 line 2, BAH at [33],[34], NWH at [18])

104.In identifying further common general knowledge related to the feature of external stimulus of a security device, the opponent pointed to the evidence of Dr Kitaev where the expert discusses that which he considered common general knowledge in the field of photonic crystals/photonic crystal security devices before 2006. Here the opponent suggests that common general knowledge also includes:
·     Artificial opals and inverse opals (which are examples of photonic crystals) that allow viewing of changeable colours, used generically as tamper-prevention devices (VK at [18])
·     These opals respond to some stimuli, which could be mechanical, electrical, or even magnetic (VK at [19])
·     Core-shell particles have security applications and could be used in security devices related to the protection of security papers (VK at [13])

105.In regard to this evidence the applicant submitted that this information did not form part of the common general knowledge in Australia at the priority date. The applicant pointed to evidence from Mr Holland noting his observations at [19] of NWH:
“I was aware of photonic crystals being the subject of academic research before the priority date, but this would have been taking place overseas. However, at that time in Australia I believe that the document security industry would have had very limited understanding of photonic crystals. Certainly, I was not aware of photonic crystals being used or even contemplated for use by the industry at that time.”
106.In reply to the evidence of Mr Holland, Dr Hardwick (BAH at [33],[34]) points to documents D1-D3 to suggest knowledge of the information identified by Dr Kitaev.
107.On the balance of evidence I do not consider the particular knowledge identified by Dr Kitaev to form part of that knowledge that was commonly known to all skilled in the art in Australia before the priority date. Dr Kitaev is a researcher who has conducted his research in Canada after education in Russia. His evidence is in clear contradiction to that of Mr Holland who suggests that it was not commonly known that photonic crystals could be applied to security documents or for that matter, could be affected by external stimulus and be suitable for application to security documents. Importantly Dr Hardwick, being an expert possessing common general knowledge in Australia, suggests that knowledge of these facts is only by way of their identification in documents D1-D3 (these documents themselves not being demonstrated to form part of the common general knowledge). It follows that I do not consider that the opponent has discharged their onus to establish certain aspects of common general knowledge. It follows that I see no basis to find that the person skilled in the art would have been directly led to the claimed invention in view of only common general knowledge.
108.Therefore, I find claims 1-22 involve an inventive step in view of common general knowledge.
D1
109.Claims 1-6, 10, 11, 14 and 22 are not novel in view of document D1. It follows that they also lack an inventive step for these reasons.
110.I have reviewed the evidence filed for each of the dependent claims. I note that the applicant has not filed any evidence in respect to any of the dependent claims. I make the following findings in respect to claims 7-9, 12, 13 and 15-21 in view of document D1.

111.Claims 16-18, 20, and 21 lack an inventive step in view of document D1. Firstly, claim 16 is directed to a security device according to any preceding claim wherein the device is adhered to or substantially contained within the security document. As discussed above, document D1 discloses a device in accordance with claim 1. The person skilled in the art would have identified that the device of D1 is suitable for use with a security document, and therefore it would be mere routine to then attach that device to a security document in accordance with claim 16. In regard to claims 17, 18 and 21, the evidence establishes that optically variable security devices were commonly embedded in a window of a banknote (BAH at [78]) or placed upon a transparent polymer layer of a banknote (BAH at [79]). Regarding claim 20, the evidence also establishes that shapes such as a patch, strip or stripe were well known design arrangements for optical security devices (BAH at [81]). I see no barrier to applying these common design options to the photonic crystal security device of document D1.
112.Claims 7-9, 12, 13, 15 and 19 involve an inventive step in view of document D1.
113.The evidence in regard to claims 7-9, 12 and 13 at best states that that the features are well known in the security document industry (BAH at [69], [70], [73], [74]). This falls short of demonstrating that it would have been obvious to modify the elastic photonic crystal security device of document D1 to arrive at the claimed invention. There is no discussion in D1 of the device including any further layers beyond the photonic crystal itself. It does not appear to be a matter of routine to incorporate latent images or embossing within an elastic photonic crystal security device of the type described in document D1. I see no basis to consider that the person skilled in the art would be directly led to the claimed inventions.
114.Claim 15 is directed to the effect of the stimulus upon the photonic crystal remaining for a delay period. Dr Hardwick submits in his evidence that he would expect, upon removal of compression by a finger, a second optically variable effect to remain for at least a short period to time (BAH at [76]). I note that I have already found the claim novel as I do not consider it to be inherent that there is any delay upon removal of compression. For example there is no reason why the device of document D1, synchronously with removal of finger pressure, does not return to its original state. There is no evidence to suggest it would be obvious to modify the photonic crystal of D1 to achieve such a delay.
115.Claim 19 is directed towards the security device being provided as a projection from the security document such that the device may be grasped by a user and elastically deformed. I note the discussion of Dr Hardwick in regard to this feature where he said that (BAH at [80]):
“I consider it would be unusual to provide a projection that can be grasped by a user on a security document, such as a banknote... It is obvious that a person could grasp both sides of a banknote between a thumb and finger, and then an elastic photonic security device provided as a layer or patch on one or both sides, or embedded within a transparent window, would be elastically deformed by the grasping process, but in my view this would only involve grasping the banknote itself, not grasping a projection.”
116.On this basis I find claim 19 involves an inventive step in view of D1.
117.In summary, claims 1-6, 10, 11, 14, 16-18 and 20-22 do not involve an inventive step in view of document D1.

D2
118.Claims 1-4, 6-8 and 10 are not novel in view of document D2. It follows that they also lack an inventive step for these reasons. I make the following findings in respect to claims 5, 9 and 11-22.
119.Regarding claim 9, the relevant embodiment of document D2 is described as being a substrate constructed of photonic crystal material, a base layer and a transparent film layer. The evidence establishes that demetalised overlays were common in the art of security documents as masks to underlying optically variable effects (BAH at [70]). I am satisfied that with knowledge of the layered substrate structure described in D2, the person skilled in the art would be led as a matter of routine to try adding a further metallic layer (for example over the transparent film) in the expectation than an improved device would be obtained.
120.I also consider that claims 16, 18, 20 and 21 lack an inventive step for similar reasons discussed in relation to document D1.
121.Claims 5, 14, 15, 17, 19 and 22 involve an inventive step in view of document D2. These claims relate to reversibility of the effect of the external stimulus (e.g. elasticity) and the fact that the photonic crystal is to be viewable on opposing faces of a security document. The relevant embodiment of document D2 clearly teaches away from these features.
122.Furthermore, claims 11-13 also involve an inventive step in view of document D2. There is no evidence to suggest that it would have been routine to add nanoparticles to, incorporate a latent image into, or to emboss the optically variable device of figure 21. With particular regard to claim 12, while the evidence shows that latent images are common in the industry (BAH at [73]), it fails to establish that it would be routine to arrange a latent image (which is itself an optically variable effect) within an optically variable security device having its own optically variable effects.
123.In summary, claims 1-4, 6-10, 16, 18, 20 and 21 do not involve an inventive step in view of document D2.
D3
124.Claims 1-6, 10, 11, 13, 15 and 22 are not novel in view of document D3. It follows that they also lack an inventive step for these reasons. I make the following findings in respect to claims 7-9, 12, 14 and 16-21.
125.Regarding claims 7-8, the composite materials of document D3 are discussed as being attachable to one further material which can be provided as a layer to form a laminate ([0020]). Also discussed at [0021] of D3 is the fact that the composite materials can be attached to materials ranging from metal, glass, ceramic, wood or polymers (plastics). I also refer to evidence of Dr Hardwick which states (BAH at [69]) that printed layers (both dark and absorbing) were well known to be applied to optical security devices. I consider document D3 points to the addition of further layers which as a matter of routine I consider could be printed layers. Printed layers inevitably include a significant degree of scattering and absorption. On this basis I find claims 7 and 8 lack an inventive step in view of document D3.
126.I also find claim 9 lacks an inventive step in view of document D3. Clearly document D3 suggests attaching metal to the composite materials. Given the evidence establishes that demetalised overlays were common in the art of security documents as masks to underlying optically variable effects (BAH at [70]), I consider the person skilled in the art would be directly led to the claimed invention.
127.Claim 14 also lacks an inventive step in view of document D3. While there is no disclosure of localised compression and elongation of the disclosed elastic photonic crystal leading to localised mechanical properties, it would simply be routine to provide this localisation for example by compression of the elastic composite material of D3 in a specific region. The claim is obvious.
128.Further claims 16-18, 20 and 21 lack an inventive step for similar reasons to those discussed in relation to document D1.
129.For reasons discussed above claims 12 and 19 involve an inventive step (see D1 and D2 reasons for claim 12; D1 reasons for claim 19).
130.In summary, claims 1-11, 13-18 and 20-22 do not involve an inventive step in view of document D3.

Conclusion

131.The opposition is successful. Claims 1-8, 10, 11, 13-15 and 22 lack novelty and lack an inventive step in view of document D1, D2 and/or D3. Remaining claims 9, 16-18, 20 and 21 lack an inventive step in light of document D1, D2 and/or D3. Claims 12 and 19 are inventive. As the matters can be overcome by amendment I will allow a period of two months for the applicant to propose amendments.

Costs

132.De La Rue International Limited has not been successful in defending the application and I can see no reason why costs should not follow the event. I will award costs against them.

Dr N.R. Madsen
Delegate of the Commissioner of Patents