Innovia Security Pty Ltd v De La Rue International Limited

[2017] APO 7

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Innovia Security Pty Ltd v De La Rue International Limited [2017] APO 7

Patent Application:                2010311164

Title:Security device and method of manufacturing the same

Patent Applicant:                   De La Rue International Limited

Opponent:  Innovia Security Pty Ltd

Delegate:  Dr V. Z. Kolev

Decision Date:  16 February 2017

Hearing Date:  27 October 2016, in Canberra

Catchwords:  PATENTS – opposition to the grant of a patent – clarity – inventive step – a security device having a lenticular device – image strips formed by relief structures – only raised features of the relief structures provided with ink – whether all raised features of a relief structure identifiable – problem formulation – opposition unsuccessful – costs not awarded

Representation:  Counsel for the Applicant: Mr Tom Cordiner

Counsel for the Opponent: Mr Craig Smith

Patent attorney for the Opponent: Mr Craig Gleghorn of Watermark

Also present: Mr Ian Lindsay of Innovia Security Pty Ltd

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application:                2010311164

Title:Security device and method of manufacturing the same

Patent Applicant:                   De La Rue International Limited

Date of Decision:                   16 February 2017

DECISION

Lack of clarity or inventive step is not established.  Opposition is unsuccessful on all grounds.  Subject to appeal, I direct that the patent application proceeds to grant.  

Costs are not awarded.

REASONS FOR DECISION

1. Throughout this decision, unless explicitly stated otherwise, any reference to an Act or a section, subsection, etc. of an Act refers to the Patents Act 1990 (the Act), and any reference to Regulations or a specific regulation refers to the Patents Regulations 1991 (the Regulations).

   Background

2. The matter relates to patent application 2010311164 (national phase of PCT/GB2010/001995, published as WO 2011/051670) in the name of De La Rue International Limited (the Applicant).  The application was advertised as accepted on 29 January 2015.  A notice of opposition under section 59 was filed by Innovia Security Pty Ltd (the Opponent) on 29 April 2015.  A statement of grounds and particulars (SGP) was filed on 29 July 2015. 

3. On 28 August 2015, the Applicant filed a letter requesting the Commissioner to direct the Opponent to provide further and better particulars.  On 3 September 2015, based in part on the issues listed in the Applicant’s letter, a Delegate issued a direction to the Opponent to provide further and better particulars.

4. The evidence in support was completed on 29 October 2015.  On the same date, in response to the direction to provide further and better particulars, the Opponent filed a request to amend the SGP under regulation 5.16 together with an amended SGP.  The Applicant did not make submissions and did not request to be heard in relation to the matter.  The request to amend the SGP was subsequently allowed on 23 November 2015.

5. The evidence in answer was completed on 04 February 2016.  On the same date, the Applicant filed a request to amend the specification under section 104.  The Opponent did not file any comments and did not oppose the allowance.  The amendment was subsequently allowed on 27 May 2016.

6. The evidence in reply was completed on 05 April 2016.  On the same date, the Opponent filed a second request to amend the SGP under regulation 5.16 together with an amended SGP, stating the requested amendment to the specification by the Applicant as a reason for their request to amend the SGP.  On 15 April 2016, the Applicant filed a letter objecting to the allowance of the second request to amend the SGP and to the admittance in the proceedings of a part of the evidence in reply which, according to the Applicant, was not strictly in reply.  A Delegate considered the letter and found that the evidence was strictly in reply and the second request to amend the SGP was allowed on 03 May 2016.

7. Therefore, the instant hearing is with respect to the specification as amended by the amendments filed on 04 February 2016, and is based on the amended SGP as filed on 05 April 2016.

8. The Opponent’s Outline of Submissions for Hearing (the Opponent’s Summary) was filed on 13 October 2016.  The Summary of Patent Applicant’s Submissions (the Applicant’s Summary) was filed on 20 October 2016.

   Applicable Law and Onus

9. On 15 April 2013, the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 commenced which resulted in significant amendments to the Act and Regulations affecting, inter alia, the standard of proof required for an opposition to succeed.  However, for patent applications having a request for examination filed before the commencement date of 15 April 2013, the standard of proof remains the one that was in force prior to that commencement date.  According to this standard of proof, it must be established that it is practically certain (or, in other words, the Commissioner should be clearly satisfied) that the patent if granted would be invalid (Genetics Institute Inc v Kirin-Amgen Inc [1999] FCA 742, at [17]; Commissioner of Patents v Sherman [2008] FCAFC 182, at [18]; F.Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283, at [66-67]).

10. The request for examination with respect to the opposed application was filed on 18 March 2013, therefore the above mentioned standard of proof applies. In addition, the filing date of the request for examination being before 15 April 2013 also means that the application was examined under the Act and Regulations as in force before the amended provisions of the Raising the Bar Act and the same are also applicable to the present opposition proceedings.

11. It is well settled that the Opponent has the onus of establishing the facts supporting the grounds of opposition.

    Grounds of Opposition and Evidence

12. The SGP lists the following grounds of opposition: lack of novelty; lack of inventive step; not a manner of manufacture; the specification does not satisfy subsection 40(2); lack of clarity; and lack of fair basis.  However, I note that the Opponent’s Summary reduces these to two grounds of opposition: lack of inventive step and lack of clarity.  This was also confirmed at the hearing, hence my considerations will be limited to clarity and inventive step.

13. The evidence in support consists of a declaration of Dr Bruce Alfred Hardwick dated 28 October 2015 (Hardwick-1) with Exhibits BAH-1 to BAH-16.

14. The evidence in answer consists of a declaration of Dr Malcolm Robert Murray Knight dated 02 February 2016 (Knight) with Exhibits MK-1 to MK-17.

15. The evidence in reply consists of a declaration of Dr Bruce Alfred Hardwick dated 04 April 2016 (Hardwick-2) with Exhibits BAH-17 to BAH-18.

    The Specification of the Opposed Application

16. The description states that “[t]he invention relates to a security device, for example for use on articles of value such as banknotes, cheques, passports, identity cards, certificates of authenticity, fiscal stamps and other documents for securing value or personal identity” (page 1, lines 2-5).  More specifically, the invention relates to a type of security devices known as lenticular devices.  These are explained in the specification with reference to Figure 1 (reproduced below):

    “Figure 1 shows a cross-section through a lenticular device which is being used to view images A-G. An array of cylindrical lenses 2 is arranged on a transparent substrate 4. Each image is segmented into a number of strips, for example 7 and under each lens 2 of the lenticular array, there is a set of image strips corresponding to a particular segmented region of images A-G. Under the first lens the strips will each correspond to the first segment of images A-G and under the next lens the strips will each correspond to the second segment of images A-G and so forth. Each lens 2 is arranged to focus in the plane of the strips such that only one strip can be viewed from one viewing position through each lens 2. At any viewing angle, only the strips corresponding to one of the images (A, B, C etc.) will be seen through the corresponding lenses. As shown, each strip of image D will be seen from straight on whereas on tilting a few degrees off-axis the strips from images C or E will be seen.

    The strips are arranged as slices of an image, i.e. the strips A are all slices from one image, similarly for B, C etc. As a result, as the device is tilted a series of images will be seen. The images could be related or unrelated. The simplest device would have two images that would flip between each other as the device is tilted.” (page 1, line 19 to page 2, line 2)

17. Such a simple device with two images is illustrated in a perspective view on Figure 2 (also reproduced below).

18. The specification ends with 20 claims.  The only independent claim is claim 1 and it is reproduced below:

    “1. A method of manufacturing a security device, the method comprising providing an array of lenticular focusing elements on one side of a transparent substrate; and providing a corresponding array of sets of image strips on the other side of the transparent substrate, each image strip having image areas and non-image areas, the image strips and lenticular focusing elements defining a lenticular device such that at different viewing directions a corresponding image strip from each set is viewed via respective lenticular focusing elements, wherein the image strips are formed at least in part as a relief structure having raised features, characterised in that the method further comprises providing ink onto only one or more of the raised features of the relief structure after formation of said relief structure.”

    Claim Interpretation and Clarity under Subsection 40(3)

19. In the following, I will consider the interpretation of the claims having regard to the specification, the parties’ submissions and the evidence.  Relevantly to this opposition and in light of the Opponent’s submissions, I will give a particular consideration to independent claim 1.

    The non-image areas of each image strip

20. The expression “each image strip having image areas and non-image areas” could, on its own, be confusing.  I note that for each image strip, the whole image strip will be visible through the corresponding lenticular focusing element at a particular viewing angle, hence the whole image strip will contribute to (by forming a slice of) the visible design pattern (or image in a broad sense) at that viewing angle.  Then the question is, what is the correct interpretation of the phrases “non-image areas” and “image areas” and what is the distinction between the two.

21. I will refer to the description for guidance:

    “In a lenticular device, the strips are arranged as slices or segments of an image e.g. strips A, B etc where A and B represent either different images or different views of the same image. Each individual strip will comprise image and non-image areas. In the known lenticular devices the image regions of the strips are printed onto the substrate or carrier layer 4. In the present invention, however, the image regions of the strips are formed as a relief structure and a variety of different relief structures suitable for this are shown in Figure 4.” (page 8, lines 9-15, emphasis added)

22. Figure 4 is reproduced below and I note that each curve A to I illustrates (part of) the profile of an image strip along its length with “IM” denoting an image area/region and “NI” denoting a non-image area/region.  The description continues:

    “Additionally, image and non-image areas could be defined by combinations of different elements types, e.g. the image areas could be formed from moth-eye structures whilst the non-image areas could be formed from a grating. Or even the image and non-image areas could be formed by gratings of different pitch or orientation.” (page 8, line 32 to page 9, line 2, emphasis added)

    “Optionally in step 7, a second colorant 54 ... is coated over the resin layer 26 typically using a litho, flexographic or gravure process so that in the non-image regions of the strip the second colorant 54 will be visible through the lenses 20 while in the image regions first colorant 52 will be visible. The observer will therefore see a coloured image against a differently coloured background.” (page 17, lines 24-31, emphasis added)

    “In this case, the second colorant 50 will define the image elements and the first colorant 52 will define the non-image elements and therefore form the coloured background region.” (page 18, lines 15-17, emphasis added)

23. In light of the above quoted parts of the specification, I conclude that the non-image areas are areas forming what could be perceived by the viewer as a background to the specific shape or design formed by the image areas.  Hence the distinction between the image and non-image areas is purely in the role they play in the overall artistic design.  They both can be formed as relief structures, they both can have ink.  The only requirement is that they must have different properties such that they form parts of the overall artistic design that are visually distinguishable from each other.

    The relief structure having raised features

24. The phrase “raised features” originates from the verb “raise”.  Macquarie Dictionary (online edition) defines this word in several ways, from which the most relevant to the context of the claim are:

    • “to cause to project; bring into relief”; and
    • “to increase in height or thickness”.

25. Hence, the plain meaning of a raised feature is a projecting feature or a feature with increased height.  

26. I note that the plain meaning above appears somewhat relative and imprecise, i.e. it does not strictly define with respect to what, the feature is projecting or with increased height – e.g. with respect to its immediate surroundings, a virtual base plane defined according to certain rules, the original surface of a substrate on which the relief is formed, etc.  Despite this, there is no suggestion in the evidence that, in the context of the art to which the instant invention belongs, the phrase in question must be given a more specific, hence more precise meaning.  Dr Hardwick states:

    “… In the art of security devices for documents of value and the like, it is inherent that a relief structure has raised features. A relief structure having raised features could be any one of a number of structures including embossed regions, debossed regions, diffraction gratings, and printed matter provided by the ‘conventional printing techniques’ described on page 2 at line 19 of the Opposed Application, ie gravure, lithography and intaglio. I would also regard all of the relief structures shown in Figures 4A-4I of the Opposed Application to be structures having raised features.” (Hardwick-1 at [28.2], emphasis added)

27. Dr Knight does not expressly disagree with this paragraph of Hardwick-1, except for the part related to Dr Hardwick’s opinion that “lithography or gravure processes produce a ‘relief structure having raised features’” (Knight at [155]).

28. I generally agree with Dr Hardwick and consider that the term “relief” implies a non-flat or non-planar surface which will always have features of a different height.  In the absence of a specific meaning in the art, the plain meaning should apply and despite its relative nature as discussed above, at least some of these features could potentially be considered projecting, hence raised.  As it will become apparent later, the relative nature of the plain meaning becomes a hurdle when one attempts to categorise all elements of a complex relief structure into raised features and other (i.e. not raised) features.

29. With Dr Hardwick’s inherency statement (as emphasised above) in mind, I need to consider whether the explicit mentioning of the raised features in the expression “a relief structure having raised features” limits the term to a specific type of relief structure with somewhat more pronounced and easily identifiable raised features (e.g. as in Figure 4 structures B and H) or this explicit mentioning serves only to provide explicit antecedent basis for the later expression in the claim “one or more of the raised features”.  In this consideration, I also need to have regard to the specific context in which the phrases are used.

30. In the context of claim 1, I consider that there are two conditions imposed on the relief structure: (i) the relief structure is such that “the image strips are formed at least in part as a relief structure”; and (ii) the relief structure allows “providing ink onto only one or more of the raised features of the relief structure after formation of said relief structure”.  I do not consider that the dependent claims define any additional conditions affecting the type or profile of the relief structure.

31. With respect to condition (i), I am not presented with evidence that the specific purpose or use of forming image strips in a lenticular device which is part of a security device imposes any specific limitations to the type or profile of the relief structure.  Indeed, Figure 4 of the application under opposition provides “a variety of different relief structures suitable for this”, and I have no reasons to assume that this is exhaustive.

32. The part of condition (ii) relating to “providing ink onto only one or more of the raised features of the relief structure” requires a more detailed consideration.  Grammatically, I consider two possible interpretations which I will illustrate using brackets to group words for their combined interpretation.

33. The first interpretation is “providing ink onto {only one} or more of the raised features of the relief structure”.  In this case the word “only” appears redundant except for emphasising that the ink can be provided on one of the raised features and not provided anywhere else on the structure.  In addition, this interpretation does not appear to exclude providing, in this step of the method, ink onto other elements of the relief stricture, including (in the extreme) the whole structure, which does not appear a reasonable proposition in the context of the claim.

34. The second interpretation is “providing ink {onto only} one or more of the raised features of the relief structure”.  This interpretation again allows for the ink to be provided on one of the raised features and not provided anywhere else on the structure.  However it excludes providing, in this step of the method, ink onto any other element of the relief structure which cannot be regarded as a raised feature.  In the context of the claim, I consider the second interpretation to be the correct one and I note that this was also the interpretation agreed on by both parties.

35. In light of condition (ii), a possible consideration would be that the skilled addressee would be able to determine which types of relief structures have profiles that are suitable for the purpose of providing ink onto only the raised features thereof, and hence the relief structures of claim 1 are limited to these types of relief structures.  However at the hearing, in response to the Opponent’s submissions on clarity (discussed later in this decision), the Applicant expressed their views on what they consider raised features that could be provided with ink by way of highlighting in green the relevant parts of all of the relief structure examples provided in Figure 4 (the drawing submitted by the Applicant and referred to as Modified Figure 4 is reproduced below, the green areas representing the ink).

36. In addition, neither of the Experts appears to consider that some types of relief structures should be excluded from the scope of claim 1 (see for example later in this decision their comments on obviousness with respect to document D8 where the relief structure is a diffraction grating).  The above quoted statement of Hardwick-1 at [28.2] also does not appear to suggest that Dr Hardwick considers the claims limited to a specific type of relief structure and as mentioned above Dr Knight does not expressly disagree.  Based on the above, I consider that providing ink onto raised features of the relief structure after its formation as defined in general terms in claim 1 does not impose any specific limitations on the type of the relief structure.  

1. Hence in the context of the claims expressed by the conditions (i) and (ii), I can find no convincing reasons to adopt a limiting interpretation for the type of the relief structure due to the explicit mentioning of the raised features in the expression “a relief structure having raised features”.  I conclude that the explicit mentioning of the raised features serves only to provide explicit antecedent basis as mentioned above.  The wording of claim 1 does not clearly exclude relief structures with complex profiles nor does it provide any limitations to the arrangement of the raised features on the image strips (e.g. with respect to the image and non-image areas).  As it will become apparent later in this decision, this results in ambiguities which cannot be resolved in the context of the claims alone without reference to the body of the specification.

   Modified Figure 4

   Clarity

2. According to the Opponent’s submissions:

   “… the skilled addressee cannot determine ‘the exact boundary of the area within which they will be trespassers’, with the result that claim 1 (and its dependent claims) lack clarity.” (Opponent’s Summary at [82], emphasis in the original)

3. The Opponent further explains:

   “Claim 1 as amended now requires that:

   … ink [be provided] onto only one or more of the raised features of the relief structure after formation of said relief structure.

   While there are difficulties with the clarity of this wording in a broader sense, Dr Knight understands it to require that the ink be provided only onto the raised regions of the relief structure, and not in the voids or recesses.

   However, this leaves as an important issue how to differentiate ‘raised features’ from non-raised features or portions.” (Opponent’s Summary at [74-76], emphasis in the original, reference(s) removed)

4. The Applicant responds that:

   “…
   (e) Only one element of the claims is said to lack clarity, although that complaint is not one that is properly enunciated in the Amended Statement of Grounds or by the experts.

   The Applicant’s primary position is that the Opponent should not be permitted to raise matters in evidence or submissions that are not raised in its Amended Statement of Grounds. Nevertheless, the Applicant will seek to deal with each of the allegations of invalidity raised in the OS, even when not supported by evidence or contained in the Amended Statement of Grounds.” (Applicant’s Summary at [2.4-2.5], reference(s) removed)

5. The SGP mentions the ground of lack of clarity and provides the following particulars:

   “In at least claim 1 it is not clear what is meant by the phrase ‘a relief structure’. The person skilled in the art is therefore unsure as to the scope of the claims.

   In claim 1 it is not clear what is meant by the phrase ‘raised features provided with ink’.” (SGP at [5.1-5.2])

6. Since the expression “raised features provided with ink” is not found in the present claim 1, it appears that the above particulars relate more directly to the claims before the amendment, however the issue raised in the Opponent’s Summary does not appear completely new and unrelated.  I note that, distinctively from the issues of obviousness, claim interpretation is a question of law.  In addition, since the Applicant provided their arguments in the Applicant’s Summary and the issue of clarity was discussed relatively comprehensively during the hearing, I will consider the clarity issues raised by the Opponent in this decision.

7. To decide on clarity, I need to answer the question of how to identify all raised features and distinguish them from all other elements of the relief structure for all relief structures that are within the scope of claim 1, so that the person skilled in the art would be able to distinguish between the elements of the relief stricture that can be provided with ink and the elements of the relief stricture that must not be provided with ink.

8. The Applicant submits that:

   “In the circumstances, claim 1, and the particular phrase complained of, provides a workable standard to the intended use of the method for the manufacture of security devices.” (Applicant’s Summary at [7.15])

9. The Applicant further explains:

   “The phrase should, of course, be construed in the context of the claim as a whole.

   First, the claim requires sets of image strips to be formed at least in part as a relief structure. That relief structure must have raised features. Then the ink must be provided onto only one or more of the raised features after formation of the relief structure. The word ‘only’ makes clear that the ink will be on one or more of the raised features of the relief structure but not on other parts of the relief structure. Consistently, Dr Knight explains at [108] that he considers the key aspect of the invention:

   ‘is the formation of a microimage array using relief structures, the raised regions of which are subsequently inked’” (Applicant’s Summary at [7.8-7.9], emphasis in the original, reference(s) removed)

10. I agree with the Applicant to the extent that this part of their submissions relates to the effect of the word “only” which coincides with my interpretation as discussed earlier, and which was also accepted by the Opponent (see Opponent’s Summary at [75], further elaborated by the Opponent at the hearing). 

11. With respect to the interpretation of “raised features”, the Applicant continues:

    “…The raised features of claim 1 may be distinguished from the adjacent non-raised regions and can be defined at least with reference to those non-raised regions.” (Applicant’s Summary at [7.11], emphasis added, reference(s) removed)

12. The above statement refers to Dr Knight:

    “The benefits of the Amended Application’s disclosure of inking raised regions (as opposed to recesses) are set out on page 6 of the Amended Application as follows:

    The inking of raised areas has the advantage that it is better suited to multiple colours since the doctoring process would inevitably mix different inked areas. Multiple colours allow different coloured elements to pass by each other in a movement type design. Particularly attractive is to use a wet litho process to ink the raised areas since this would allow some simple colour based effects (e.g. image flip or a simple moiré effect of moving lines produced by a pitch of colours that doesn't quite match the lens pitch) with the higher resolution raised image effects.

    In other words, it is easier to apply different colours to adjacent raised regions by, for example, ‘kiss-coating’ than applying colours to adjacent recesses.” (Knight at [134-135])

13. The Applicant also emphasises that Dr Hardwick apparently does not disagree with the interpretation of Dr Knight:

    “…At [12] he [Dr Hardwick] refers to Knight at [108] referred to above, but does not cavil with Dr Knight’s interpretation that the raised features are ‘raised regions’ of the relief structure – necessarily distinguishable from non-raised regions onto which ink is not provided.” (Applicant’s Summary at [7.12], emphasis added)

14. I do not agree that, in general, in case of a complex relief structure profile, the raised regions of the relief structure are “necessarily distinguishable from non-raised regions” as it will become apparent later.  Hence I consider that replacing the terms “raised features” and “non-raised features” (see claim 1 and Opponent’s Summary at [76]) with “raised regions” and “non-raised regions”, respectively, does not resolve the clarity issue brought forward by the Opponent.

15. I consider that there are various criteria that could be devised for distinguishing raised from non-raised features (or regions, areas, parts, elements, etc.) of a relief structure.  

16. In the above quoted part of Applicant’s Summary at [7.11], the Applicant asserts that raised regions “can be defined at least with reference to those [adjacent] non-raised regions”.  I agree that raised features could potentially be defined as local “peaks” (or local maxima in a mathematical sense) of the relief structure profile.  However with respect to Modified Figure 4 structure I (the “Aztec structured area”), the Applicant does not consider the local peaks in the IM areas as raised features.  This is despite the fact that both peaks have adjacent lower (i.e. non-raised) regions.

17. As explained at the hearing, to identify the raised features in Modified Figure 4, the Applicant uses a virtual reference or base line extending along the surface of the flat NI areas (which as I already discussed, in general, do not have to be flat).  I consider that this is a different approach which could potentially be employed to distinguish the raised features, however in general, this different approach would result in a different outcome.  Furthermore, even if I adopt this latter approach, I note that the two local peaks (in the “Aztec structured area”) mentioned above are of the same height as the flat NI areas and hence sit on the reference line.  Interestingly, despite this the Applicant considers the NI areas as raised features (see the green colour representing the ink), but does not consider the two local peaks as raised features.  At the hearing, I asked the Applicant for their reasoning and, as best understood, in the Applicant’s submissions, in reality the peaks will not be provided with ink because of the limitations imposed by the ink including the size of the pigment particles.

18. I do not find this explanation convincing, since the Applicant has provided ink to the raised features of structures C and D of Modified Figure 4, which appear to be of the same or smaller size (especially structure D labelled as “Moth-eye/fine pitch grating”) in comparison to the two local peaks of structure I (the “Aztec structured area”). 

19. To illustrate their view on clarity, the Opponent provides two example profiles of relief structures (reproduced below) for which, according to their submissions, it would be impossible to determine what parts of these profiles can have ink and what parts cannot while staying “within the scope of claim 1” (Opponent’s Summary at [77-80]).  The Opponent also submits that “[t]he same difficulties would apply to gratings C, D, G and I as shown in Figure 4 of the Application” (Opponent’s Summary at [81]).

20. At the hearing, the Opponent further elaborated their point that while determining the raised and not raised features in certain simple relief structures could be possible (e.g. those provided with ink as described in the application, which are all of the type illustrated on Figure 4 structures A, B and H), this is not the case for more complex structures which are not excluded from the claims.

    Opponent’s example structure A – Figure 35 from D7 (Exhibit BAH-9)

    Opponent’s example structure B – detail of Figure 3 from D8 (Exhibit BAH-10)

21. With respect to the example profiles provided by the Opponent, the Applicant states:

    “For example, the raised features in the figure set out at OS[77] [(structure A)] are clear with reference to an easily identifiable virtual base line. Similarly, the figure referred to in OS[79] [(structure B)] defines a central plane and it would be straightforward to identify the raised features with respect to that plane.” (Applicant’s Summary at [7.14])

22. At the hearing, I asked the Applicant to illustrate the above mentioned “virtual base line” and “central plane”.  In both cases the Applicant suggested that the base line (or central plane) should be between the highest and the lowest parts of the profiles.  I note that this is somewhat different to the way in which the base line was defined by the Applicant with respect to Modified Figure 4 as explained above.  

23. I consider the Applicant’s unconvincing explanations as a clear illustration of the difficulties facing the base line approach for differentiating the raised features from all other elements of the relief structure.  The base line could be at the position of the highest point(s) of the profile, the lowest point(s) of the profile or potentially anywhere in between, and this, in general, would result in different outcomes with respect to identifying the raised features.

24. The Applicant also emphasises:

    “…It may be noted in this respect that none of the witnesses have raised the concern the Opponent has, and each expert may very well have formed consistent views on the examples raised by the Opponent in its submissions.” (Applicant’s Summary at [7.13])

25. In my view, this only demonstrates that each of the two Experts has some intuitive notion (possibly in light of the plain meaning discussed earlier) of what a raised feature is.  Neither one of the Experts clearly expressed their views on the meaning they associate with the phrase in question and, most importantly, how the raised features are to be distinguished from all other elements of the relief structure.  I note that the two Experts did express their views with respect to which parts of the raised features can have ink and which parts cannot and, as pointed out by the Opponent during the hearing, there are differences in opinion.  Dr Knight states:

    “… Amended Claim 1 says that ink is only applied to the raised regions of the relief structure. This teaches me that it is an object of the invention that the ink must only be present on the tops of the raised regions in order to provide the desired contrast within the target micro images.” (Knight at [165], emphasis added)

26. However Dr Hardwick disagrees:

    “… I do not understand how Knight can make this assertion when the invention in Amended Claim 1 does not state that the ink is provided only on the tops of the raised regions. Amended Claim 1 only refers to providing ink onto raised features, which means that it is feasible that the ink be applied to the sides only of the raised features and not the tops at all.” (Hardwick-2 at [22], emphasis added)

27. At the hearing, the Applicant favoured Dr Knight’s interpretation, but nonetheless accepted that ink can be provided on any part of the raised feature with the clarification that providing ink to the sides would be more applicable to a sawtooth profile with slanted sides (e.g. of the type illustrated below and labelled “Example relief structure”).  For profiles with vertical sides, in the Applicant’s submissions, it was unclear how the identified techniques could result in providing ink as suggested by Dr Hardwick above.  I note that the scope of claim 1 cannot be legitimately restricted to what is achievable with the example techniques described in the specification.  In addition, in view of the above statement of Dr Hardwick, I have no reasons to believe that the skilled addressee would regard that no known technique could achieve providing ink on the sides (even vertical) of the raised features and not on the top of the raised features, hence I cannot consider this to be outside the scope of the claim.  

28. While both Experts might have a notion of what “raised features” mean, hence no concerns raised by either, in light of the above discussed disagreements on which parts of the raised features can be provided with ink, I have no reasons to conclude that the two Experts would necessarily adopt identical interpretation of “raised features” and the way to distinguish them from all other elements of a complex relief structure.  As I already mentioned, nothing in the evidence suggests the existence of a generally accepted in the art interpretation of the term “raised features” or that the person skilled in the art would give preference to one specific approach to distinguish between the raised features and the other elements of a relief structure.   

29. During the hearing, the Opponent further submitted that since increase in contrast will always be achieved when selectively applying ink, there is no functional reason or clear purpose for the feature of providing ink only to the raised features, which functional reason or clear purpose could be used in establishing a workable standard as to what parts of the structure could have ink and what parts must not have ink.

30. The Applicant responded that the functional purpose is the provision of contrast.  Therefore “a version of the inking onto the raised features of the relief structure that provides contrast” would be the correct meaning.  In the following discussion, I will consider the merits of this submission.

31. For illustration, I will consider an image strip formed in part as the “Example relief structure” illustrated below (the image area of the strip is formed as a relief structure – see e.g. Figure 4 and page 8, line 14).  If a virtual base line is provided as previously suggested by the Applicant, it would appear that the apexes 1 will be parts of corresponding raised features whereas the flat bases 2 will not be parts of the raised features.  As discussed earlier, the Applicant accepted that for this type of relief structure, the ink can be provided on the sides of the raised features as shown in red.  

    Example relief structure

32. A functional purpose providing a workable standard should allow me to answer the question of where ink can be provided and where ink must not be provided to achieve the stated purpose.  If I apply the functional purpose of providing contrast as suggested by the Applicant, it appears that the contrast between the image and its background will continuously increase with the increase of the inked area starting from each apex 1 until the whole relief structure is inked.  However the flat bases 2 are not parts of the raised features and, according to claim 1, must not be inked.  One might consider the points of contact between the inked sides and the flat bases as the boundaries of the raised features, but since the contrast would increase continuously with inking past these boundaries, limiting the inked area to the raised features within the boundaries as defined in claim 1 appears contradictory to the purpose of providing contrast. 

33. I conclude that the functional purpose as formulated by the Applicant is not suitable as a basis for establishing a workable standard in the context of claim 1 and I cannot clearly see a different functional reason capable of providing such a workable standard in the context of the claims.  

34. I consider that, in general, the Applicant’s submissions with respect to the interpretation of claim 1 do not provide a consistent approach that enables differentiation of the raised features from all other elements of a complex relief structure.  It appears that the Applicant relies mostly on common sense intuitive notion which, in general, might be subjective.

    Claim interpretation and clarity – conclusion

35. Earlier in my inquiry, I formulated the question I need to answer as how to identify all raised features and distinguish them from all other elements of the structure for all relief structures that are within the scope of claim 1, so that the person skilled in the art would be able to distinguish between the elements of the relief stricture that can be provided with ink and the elements of the relief stricture that must not be provided with ink.

36. I pointed out that the plain meaning of a raised feature is a projecting feature or a feature with increased height.  I also discussed that the plain meaning appears somewhat relative, in that it does not strictly define with respect to what, the feature is projecting or with increased height.  It follows that the plain meaning is imprecise for the purpose of defining the scope of claim 1.

37. In addition, based on my analysis I have not established:

    • that there is a particular meaning different from the plain meaning that the skilled addressee would ascribe to the phrase “raised features”;
    • that the wording of claim 1, in the context of the claims, implies limitations to the type of relief structure profiles;
    • that there is an established approach in the art with respect to identifying the raised features and distinguishing them from all other elements of the relief structure, especially for structures with complex profiles;
    • the existence of a functional reason for the claimed feature of providing ink to the raised features and not to any other element of the claimed relief structure that could be used to devise a workable standard allowing a purposive approach to determining the boundaries of the raised features.

1. I conclude that the wording of claim 1 results in ambiguities with respect to identifying the raised features that can be provided with ink and how they are to be distinguished from all other elements of the relief structure that must not be provided with ink.  I consider that these ambiguities are due to the fact that the wording does not exclude relief structures with complex profiles and does not define any spatial relationship between the image and non-image areas on one side and the raised and not raised features on the other.  Since I established that the wording of claim 1 creates ambiguities that cannot be resolved in the context of the claims or by reference to the evidence, I will attempt to resolve the ambiguities by referring to the body of the specification. 

2. The Applicant refers to several parts of the description for guidance as to the interpretation of claim 1:

   “In the case of raised areas, in accordance with the first and second aspects of the invention, these could be inked by methods analogous to offset litho printing or flexographic printing.” (page 5, lines 32-34)

   “Particularly attractive is to use a wet litho process to ink the raised areas since this would allow some simple colour based effects (e.g. image flip or a simple moiré effect of moving lines produced by a pitch of colours that doesn't quite match the lens pitch) with the higher resolution raised image effects.

   In the case of inking the raised areas the height of the raised area must be greater than the thickness of ink applied to prevent the ink entering the adjacent non-raised regions.” (page 6, lines 4-10)

   “The security device can be manufactured in a variety of ways, for example by embossing or cast-curing the lenticular focusing element array on one side of the substrate at one forming station and the relief structure on the other side of the substrate at another forming location.” (page 6, lines 31-34)

   “A coloured ink is then transferred onto the raised regions typically using a lithographic, flexographic or gravure process.” (page 11, lines 28-30)

3. Indeed the description provides information on the suitable techniques that could be applied to put the invention into practice, however I consider it impermissible to read these into the claimed invention which is not limited to any specific technique.  Regarding the requirement that “the height of the raised area must be greater than the thickness of ink applied”, in context, I consider this a functional relationship between two variable technological parameters and I cannot see how this could be applied for resolving the issue of identification of the raised features of the relief structure.

4. Analysing the description of the relevant embodiments, I note that the specification illustrates (e.g. Figures 4, 7, 11, 12, 18) providing ink only with respect to relief structures of the simple type shown on Figure 4 structures A, B, and H (items 10 in structure H represent the ink), where the raised features coincide with either the image areas or the non-image areas.  In addition, the description states:

   “We have realised that it is advantageous to take advantage of forming the image strips wholly or partially as a relief structure by inking the structures. Cast-curing or embossing could be used to provide the relief structure, cast-curing providing higher fidelity of replication.” (page 5, lines 3-6, emphasis added)

   “Typical thicknesses of security devices according to the invention are 2-100 microns, … The relief depth depends on the method used to form the relief where the relief is provided by a diffractive grating the depth would typically be in the range 0.05-1μm and where a coarser non diffractive relief structure is used the relief depth is preferably in the range 0.5-10μm and even more preferably 1-5μm

   Typically, the lenticular focusing elements comprise cylindrical lenses but it would also be possible to utilize lenticular micromirrors.

   In the case of raised areas, in accordance with the first and second aspects of the invention [a method of manufacturing a security device and a device manufactured according to the method (page 3, lines 15-28)], these could be inked by methods analogous to offset litho printing or flexographic printing. The inking of raised areas has the advantage that it is better suited to multiple colours since the doctoring process would inevitably mix different inked areas.” (page 5, line 19 to page 6, line 2, emphasis added)

   “In this example the image areas of the strips are creating [sic] by creating a series of raised regions or bumps in a resin layer 26 provided on a PET spacer layer 24. A resin layer 21 is provided on the opposite surface of the layer 24 into which a lens array 20 is embossed or cast cured. A coloured ink is then transferred onto the raised regions typically using a lithographic, flexographic or gravure process.” (page 11, lines 25-30, emphasis added)

   “Preferably the relief structures suitable for inking are not highly reflective and are not structures which prior to being inked will give differing chrominance/luminance since that will confuse the viewer from the printed ink colours. The advantage of such raised inked structures when compared to noninked diffractive relief structures is that coloured inks structures provide an enhanced contrast with both the non-inked regions and other differently coloured inked regions.” (page 12, lines 7-13, emphasis added)

5. Relevantly, the description is completely silent on the issue of how to differentiate between the raised and non-raised features of a relief structure.  It appears that the description considers the existence of raised areas as a prerequisite, see e.g. “[i]n the case of raised areas, … , these could be inked…”.  This somewhat points towards relief structures where identifying all raised areas and their distinction from the rest of the relief structure is not an issue.  In addition, based on the above disclosure in the body of the specification, I consider that the “coarser non diffractive relief structure[s]” are the structures that can be provided with ink.  This means that despite Applicant’s apparent assertion to the contrary (see Modified Figure 4), some of the types of relief structures illustrated in Figure 4 (e.g. at least structures C and D) are not to be provided with ink.

6. From the body of the specification, I can also infer that the provision of contrast is required between the image and its background, hence between the two types of areas of the image strips – the image areas and the non-image areas (see also the discussion regarding the interpretation of the phrase “non-image areas” above).  The provision of ink appears described in this context.  If the contrast between the areas of the two types is to be provided by using only one kind of ink (i.e. of one colour), the contrast would be maximised if the areas of one type (either image or non-image) are entirely covered by ink and the areas of the other type are left completely without ink.  In the context of an image strip provided at least in part as a relief stricture where only the raised features are inked, this maximum contrast would be achieved if the raised features coincide with the areas of one of the types (either image or non-image), and the not raised elements of the relief structure coincide with the other of the types.  This simple arrangement is clearly illustrated in Figure 4 structures A, B, and H. 

7. Since providing the maximum contrast between the image and non-image areas of the image strip can be achieved by using the simple type of relief structures of Figure 4 structures A, B, and H, I can see no clear benefit if a more complex relief structures are employed and, indeed, no such complex relief structures are mentioned or exemplified in the specification in the context of providing ink to the raised features.  Hence I conclude that the claimed invention is concerned only with simple relief structures similar to those illustrated in Figure 4 structures A, B, and H.  Relevantly to defining the boundaries between the raised features and all other elements of the relief structure, both Experts appear to agree that the side walls are parts of the raised features, despite the above discussed differences in opinion with respect to where ink can be provided. 

8. Therefore, I can resolve the above mentioned ambiguities in the claim language by referring to the body of the specification.  I conclude that the relief structures defined in claim 1 have the following features:

   • Each relief structure consists entirely of elements (a), (b), and (c), where these elements are: flat raised regions (a) separated by flat non-raised regions (b) and connected to the adjacent non-raised regions by side walls (c);
   • Each one of the flat raised and flat non-raised regions is substantially parallel to the substrate;
   • Each one of the flat raised regions has a first height (i.e. a level of protrusion from the substrate) which is the same for all flat raised regions, the first height being the highest for the relief structure;
   • Each one of the flat non-raised regions has a second height which is the same for all flat non-raised regions and lower than the first height, the second height being the lowest for the relief structure;
   • All elements of the relief structures except the flat non-raised regions constitute the raised features;
   • Each one of the raised features coincides with one of the image areas and each one of the flat non-raised regions coincides with one of the non-image areas, or each one of the raised features coincides with one of the non-image areas and each one of the flat non-raised regions coincides with one of the image areas;
   • The relief structures are not diffractive.

9. As already mentioned, the Opponent accepted at the hearing that identifying the raised and not raised features in certain simple relief structures (e.g. those provided with ink as described in the application) could be possible, and their main concern is with respect to the complex relief structures which, according to their submissions, are not excluded from the claims.  Based on my construction of claim 1, such complex relief structures are not within the scope of the claim, so this ground of opposition does not succeed.

10. I started my consideration of clarity by asking the question how to identify all raised features and distinguish them from all other elements of the structure for all relief structures that are within the scope of claim 1, so that the person skilled in the art would be able to distinguish between the elements of the relief stricture that can be provided with ink and the elements of the relief stricture that must not be provided with ink.  I was able to resolve the apparent ambiguities in the claim.  I am satisfied that claim 1 (and the dependent claims 2-20) has not been shown to be unclear.    

    Inventive Step under Subparagraph 18(1)(b)(ii) and Subsection 7(2)

11. The test for inventive step was developed in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12; (1981) 148 CLR 262:

    “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.” (at [45], emphasis added)

12. In Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) [2007] HCA 21; (2007) 235 ALR 202; 81 ALJR 1070, it was stated:

    “In Alphapharm, this Court reiterated that ‘obvious’ means ‘very plain’, as stated by the English Court of Appeal in General Tire & Rubber Co v Firestone Tyre and Rubber Co Ltd. The majority in Alphapharm also confirmed that the question of whether an invention is obvious is a question of fact, that is, it is what was once a ‘jury question’. Broadly speaking, the question is not a question of what is obvious to a court. As well as being a question of fact, the question of determining whether a patent involves an inventive step is also ‘one of degree and often it is by no means easy’, because ingenuity is relative, depending as it does on relevant states of common general knowledge….

    Further, as recognised in Beecham Group Ltd's (Amoxycillin) Application, as a basic premise, obviousness and inventiveness are antitheses and the question is always ‘is the step taken over the prior art an “obvious step” or “an inventive step”’? An inventive step is often an issue ‘borne out by the evidence of the experts’. There is no distinction between obviousness and a lack of inventive step. A ‘scintilla of invention’ remains sufficient in Australian law to support the validity of a patent. In R D Werner Lockhart J stated that there must be ‘some difficulty overcome, some barrier crossed’. This is consonant with older authorities in the United Kingdom which recognised that some inventiveness was required to distinguish patentable advances over the prior art from advances which ‘any fool’ could devise. It also accords with the requirement in the United States that for an invention to be ‘non-obvious’ it must be ‘beyond the skill of the calling’.” (at [51-52], emphasis in bold added, reference(s) removed)

13. Relevantly to this opposition, it is important to emphasise that obviousness is a question of fact that is to be established by evidence.

    The problem

14. The Opponent states that:

    “A relevant problem that existed as at the priority date was to have an optically variable device for use as a security device that would provide a means of authentication for a relevant document or product, and be relatively difficult to counterfeit.” (Opponent’s Summary at [55])

15. The Applicant agrees:

    “The Applicant generally accepts the statement of the problem known to the hypothetical person skilled in the art at OS[55], namely the desire to make an optically variable device for use as a security device that would provide a means of authentication for a relevant security device, and be relatively difficult to counterfeit.” (Applicant’s Summary at [8.10])

16. I will now consider what the body of the specification describes as the problem addressed by the invention.  After briefly mentioning that the “holograms and other diffractive devices” are “the most common” optical security devices and that the moiré magnifiers have certain disadvantages (see page 1, lines 8-13), the description draws the reader’s attention to the issues related to the use of lenticular devices which, as already discussed, are the main subject of the instant invention:

    “It has also been known that so-called lenticular devices can be used as security devices. However, these devices have never had much commercial success as security devices because of practical constraints on the thickness of substrates with which they must be used.” (page 1, lines 14-17)

17. Further, the specification states that “[a] practical problem with lenticular devices is that the thickness [of the device] is dependent on the width and number of the interlaced image strips” (page 2, lines 9-10).  Then, the specification provides a detailed explanation, exemplified with reference to Figure 1, as to why thin lenticular devices with a relatively large number of image strips per lens (e.g. seven strips A to G are illustrated in Figure 1) require high manufacturing or printing resolution for the image strips (see page 2, lines 10-18). 

18. The specification continues by commenting that:

    “This is not practical with conventional printing techniques such as gravure, lithography and intaglio which can at best achieve resolutions of 20μm/pixel correlating to 1200dpi. The need to register colours to each other and to the lenticular place further demands on the printer. Commercially available lenticular devices are therefore relatively thick (>150μm) and this has prevented their use on/in flexible security documents such as banknotes where devices typically have thicknesses in the range 1-50μm.

    To be integrated into a secure document, a lenticular device needs to be thin. As a consequence, such a (micro-)lenticular device will have some inherent security since the authenticator can check the device thickness and flexibility. Paper (including banknote paper) is typically ~ 100μm thick and ideally a micro-lenticular device incorporated into or onto the device will be less  than half the thickness – the thinner the micro-lenticular device, the more integrated it will feel to the touch. As outlined above with conventional printing techniques, however, it is not possible to reduce the thickness sufficiently.” (page 2, lines 18-32)

19. Further, the specification provides a brief discussion of the issues associated with the use of some relief structures for forming image strips of lenticular devices:

    “Examples of structures in which the image strips are formed by a relief include simple embossed or debossed structures which provide little or no contrast to the flat background regions and the use of colour is solely through the colour of the substrate and is therefore limited, and diffractive gratings which are complex to produce and it is difficult for the authenticator to differentiate between the lenticular optical effect and the diffractive optical effect. In general the use of diffractive structures in lenticular devices is limited as their brightness and visibility is dependent on the lighting conditions and the visibility will be significantly reduced in low lighting conditions.” (page 3, lines 1-9)

20. The discussion ends with the generic, but not uncommon for a patent specification, statement that:

    “It is desired to address or ameliorate one or more disadvantages or limitations associated with the prior art, or to at least provide a useful alternative.” (page 3, lines 10-12)

21. In view of the above discussion in the specification, I do not consider the broad generic problem formulated by the Opponent, and agreed on by the Applicant as quoted above, as the correct starting point for inventive step analysis.  Formulating the problem so broadly would mean ignoring the fact that the specification provides a relatively detailed discussion of a specific problem associated with a specific optically variable device, i.e. the issue of the limited resolution of the conventional printing techniques and its impact on the production of thin lenticular devices for security devices.  The issues of using certain types of relief structures to form image strips for lenticular devices are also mentioned, but these do not appear explicitly presented as related to the issues of the device thickness.

22. In addition, having considered the section “BACKGROUND” of the opposed application (Dr Knight refers to this section as “Extract”) the two Experts comment:

    “… My understanding from the Background of the invention section is that the Opposed Application seeks to address the problem of lenticular device thickness and relief structure visibility.” (Hardwick-1 at [23.8])

    “… Having read the Extract, I consider that its reference to ‘disadvantages or limitations’ includes:

    (a) The identification, development and manufacture of a thin lenticular device, suitable for fixing onto or into flexible substrates such as banknotes (which typically need to have a lens diameter and image strip repeat period of less than 30 μm);

    (b) The need to produce a target image with good contrast with its background (a so-called ‘strong’ visual effect);

    (c) The desire to produce a device having features (a) and (b) above that would work in diffuse lighting conditions.” (Knight at [38])

23. During the hearing, I asked whether the problem stated by the parties is not too generic in light of the specification.  A discussion of the issue resulted in a consensus that the problem could potentially be formulated differently.  As the other extreme to the generic problem, one could formulate the problem as narrowly as how to improve the visual contrast in the optical effect produced by a thin lenticular device with image strips manufactured as relief structure(s).  However, for the reasons discussed below, I do not consider that fair reading of the specification supports formulation of the problem in such a way.

1. Although the claimed invention is limited to the use of relief structures of a particular type and with inked raised features, the body of the specification consistently suggests that the described invention is not necessarily so limited.  

2. In that respect, on one hand, the specification does place certain emphasis on the advantages of using raised inked structures:

   “The advantage of such raised inked structures when compared to non-inked diffractive relief structures is that coloured inks structures provide an enhanced contrast with both the non-inked regions and other differently coloured inked regions.” (page 12, lines 10-13, emphasis added)

3. However, on the other hand, the specification does not in any way suggest that because of their disadvantages, non-inked relief structures (e.g. diffractive) should not be considered at all as an option for developing thinner lenticular devices:

   “In a further embodiment when the image elements of the strips are formed from diffraction gratings then different image elements within one strip or in different strips can be formed by different gratings. The difference may be in the pitch of the grating or rotation. This can be used to achieve a multicoloured diffractive image which will also exhibit a lenticular optical effect such as an animation. For example if the image strips creating the chevrons in the example illustrated in Figure 5 had been created by writing different diffraction tracks for each strip then as the device in Figure 5 is tilted around the line B-B lenticular animation of the chevrons will occur during which the colour of the chevrons will progressively change due to the different diffraction gratings. A preferred method for writing such a grating would be to use electron beam writing techniques or dot matrix techniques.” (page 12, lines 21-32, emphasis added)

100. Furthermore, with reference to Figure 13, the specification provides what I consider a detailed description of a method of manufacturing a lenticular device subject to the instant invention where the relief structures are not inked:

“Figure 13 illustrates an alternative method in which the image strips are formed by diffractive surface reliefs.

In step 1, a carrier layer 24 is coated with cast-cure or thermoforming resin layer 26 (step 1).

Strips A and B, representing views A and B of a lenticular switching device, comprise image and non-image regions. In Strips A the image regions are defined by one grating structure X and in Strips B the image regions are defined by a second different grating structure Y. The grating structures X, Y which have been previously originated are then simultaneously formed by embossing into the exposed surfaces of the resin layer 26 (step 2). The use of two different grating structures for the image regions of A and B provides a visual contrast due to the different diffractive colour effects. This difference is not essential and the image regions could be defined by the same diffractive grating structure. The non-image regions could also be defined by a grating structure which is different to that of the image regions. The grating structures could differ for example by rotation and pitch.” (page 18, line 22 to page 19, line 3, emphasis added)

101. As I already mentioned, in the section “BACKGROUND”, the specification notes that “[e]xamples of structures in which the image strips are formed by a relief include simple embossed or debossed structures … and diffractive gratings”, and discusses their disadvantages.  However, the wording of the specification does not explicitly link the known use of such relief structures to the problem of achieving the required higher resolution for the image strips of thin lenticular devices used as security devices.  In other words, the specification does not suggest that the mentioned example structures represent a well-known in the art solution to this resolution problem, or even that they have been previously used in attempts to solve this problem.  Furthermore as discussed above, different relief structures without ink are presented as part of the invention despite the fact that they will inevitably have the described disadvantages.  Hence I consider the problem associated with the described disadvantages of using relief structures to form the image strips of lenticular devices a secondary problem.  The body of the specification does not appear to aim exclusively at providing a solution to this secondary problem.

102. On balance, although the use of relief structures to form image strips for lenticular devices in general was part of the common general knowledge (as discussed later in this decision) and is also mentioned in the specification, for the above reasons, I consider that the main problem described in the body of the specification is how to increase the resolution when manufacturing the image strips of lenticular devices used for security devices, this problem being addressed by forming the image strips as relief structures.  Different relief structures with different optical properties can be used (see Figure 4) and most are left without ink despite the described disadvantages.  However when a particular type of relief structures is used, the secondary problem related to the relief structures disadvantages (e.g. as described in relation to the “simple embossed or debossed structures”) is addressed by providing ink to the raised features which coincide with either the image or the non-image areas of the image strips, thus achieving good image contrast and good visibility in low light conditions, similar to those achievable by the use of conventional printed image strips.  I note that the use of this type of inked relief structures is the subject of the claimed invention

103. Dr Knight states:

“I understand that the advantages of the invention referred to above include:

(a) The ability to print images at sufficiently high resolution for incorporation into or onto flexible and thin security documents such as banknotes.

(b) Improved contrast, particularly when compared to non-inked diffractive structures (see, for example, p. 13, lines 6-12).

(c) Improved visibility of the images in low lighting conditions, particularly when compared to non-inked diffractive structures (see, for example, p. 13, lines 12-15).

(d) A convenient and effective way to produce coloured images (see, for example, p. 13, lines 15-19).” (Knight at [114])

104. I agree with Dr Knight that claim 1 defines a method which, when implemented at an appropriate micro-scale, allows forming the image strips with increased resolution while also achieving good image contrast and visibility in low light.

105. However I have no reasons to consider that claim 1 is limited to creating “images at sufficiently high resolution for incorporation into or onto flexible and thin security documents such as banknotes”.  My view is further reaffirmed by the existence of dependent claim 11 which introduces the limitation that “the width of each image strip is less than 50 microns, preferably less than 20 microns, most preferably in the range 5-10 microns”.  Hence the security device manufactured by the method of claim 1 can be thick enough and with image strips wide enough so that the above discussed higher resolution is not required, as a device of this thickness could easily be produced using conventional printing techniques on a flat substrate.  For these reasons, I cannot conclude that claim 1, in its entire scope, solves the problem of increasing the resolution when forming the image strips in lenticular devices used for security devices.  For the purpose of inventive step analysis I need to formulate the problem such that its solution is provided by claim 1 over its entire scope.  Therefore, I will adopt the problem of providing an alternative technique for forming the image strips in lenticular devices used for security devices while also achieving good image contrast and good visibility in low light conditions.

The person skilled in the art and the common general knowledge

106. The hypothetical “person skilled in that art” and the “common general knowledge” are well established concepts and I do not consider it necessary to discuss the relevant Authorities.

107. Referring to the evidence, the Opponent submits:

“The area of document security was a highly technological area, and people working in that area took care to familiarise themselves with the latest developments, including:

(a) by attending relevant conferences and/or discussing with colleagues who had attended the presentations and the conference papers;

(b) reviewing textbooks, including the Optical Document Security text;

(c) reviewing published papers; and

(d) reviewing patents and patent applications.

A skilled addressee would have a higher level science or engineering qualification, with either qualifications in physics or industry experience relating to the physics of optical devices including lenses.” (Opponent’s Summary at [21-22], italic in the original, reference(s) removed)

108. The Applicant does not appear to disagree, and submits that:

“The skilled addressee of AU’164 [the application under opposition] would be a person with a practical interest in the design or manufacture of security devices for security documents (the Field). 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.” (Applicant’s Summary at [5.4], emphasis in the original)

109. The Applicant also emphasises that “[t]he non-inventive worker in the field normally excludes, for example, patentees and others of particularly inventive disposition” (Applicant’s Summary at [5.3]), and in that respect notes that both Experts, Dr Hardwick and Dr Knight, are inventive as demonstrated by their evidence.  Despite the assertion that “Dr Knight is more representative of the skilled addressee than Dr Hardwick” (Applicant’s Summary at [5.6]), the Applicant concludes that “care must be taken in relying on either Dr Hardwick or Dr Knight’s evidence to the extent it traverses what was known by them at the priority date, what they considered obvious or simple, and what they might have done when faced with the problem relevant to AU’164” (Applicant’s Summary at [5.7]).

110. I generally agree with the parties regarding the qualifications and experience of the hypothetical person skilled in the art.  With respect to the Applicant’s last point above, I agree that the inventive disposition of both Experts should be taken into account in weighing the evidence when drawing conclusions from it.

111. With respect to the common general knowledge, the Opponent submits:

“The use of optically variable devices (OVDs) in security documents was widely employed before the Priority Date.” (Opponent’s Summary at [18], emphasis in the original, reference(s) removed)

“There is no dispute between the experts that lenticular devices were a known type of OVD as at the priority date. The Application likewise asserts that lenticular devices were a known type of OVD.” (Opponent’s Summary at [23], reference(s) removed)

“Figure 4 of the Application illustrates nine different methods by which the underlying image strips may be made, each of which is said to be an embodiment of the broader invention:

In the present invention, however, the image regions of the strips are formed as a relief structure and a variety of different relief structures suitable for this are shown in Figure 4.

The description of the asserted invention in the Application proceeds on the understanding that the skilled addressee is familiar with each of these types of relief structure, and can make a security device using image strips made from such relief structures.” (Opponent’s Summary at [34-35], emphasis in the original, reference(s) removed)

“Dr Knight also accepts that embossing techniques were known, as does Dr Hardwick. As with diffraction gratings, the Application is drafted with the expectation that the skilled person understands how to use an embossing technique to make image strips, and embossed features are referred to in the prior art documents.” (Opponent’s Summary at [39], reference(s) removed)

112. The Applicant does not disagree:

“The Applicant also generally accepts, for the purposes of the hearing of this Opposition only, the propositions at OS[18], [19], [23]-[32] and [34]-[39].” (Applicant’s Summary at [6.7])

113. In addition:

“The Applicant also accepts that lenticular devices were known to the person skilled in the art at the priority date in security devices and that the image strips under the lenticular lenses could be provided by relief structures as identified in Figure 4 of AU’164.” (Applicant’s Summary at [8.11], emphasis added)

114. However:

“…the Applicant generally adopts Dr Knight’s description of what was known at the priority date about the security document industry, and about lenticular devices more particularly, in Knight at [16] to [28].” (Applicant’s Summary at [6.6])

115. In that respect, when Dr Knight (before seeing the application under opposition – see Knight at [29]) was asked “whether there were any aspects of ‘lenticular devices’ that [he] would have explored trying to improve at October 2009” (Knight at [25]), he replied:

“… As at October 2009, lenticular devices typically comprised an array of cylindrical lenses matched, as precisely as possible, to a corresponding array of image strips of ‘microimages’. … I consider that there were, at October 2009, a number of possible areas of improvement for such devices.

First, as at October 2009, lenticular devices were primarily used in relation to thick cards, mostly for novelty purposes. I consider that the use of lenticular devices was limited or restricted to such thick substrates at October 2009, because it was not commonly known:

(a) how an effective lens array with a thickness and lens diameter that was appropriate for application in or on flexible, thin security documents such as banknotes could be generated on an industrial scale on substrates suitable for banknote applications;

(b) how to print an image strip with appropriate and recognisable images having a repeat period of less than 30 micrometres (i.e. it was not known how to print the very fine dots or pixels required to produce a useful image with strong visual contrast); and

(c) how to combine the above processes at dimensions compatible with applications on flexible, thin security documents such as banknotes in a manner suitable for industrial manufacture on a commercial scale, particularly where the intended optical effect relied on precise positional registration between the lens array and the images.” (Knight at [25-26])

116. Having considered the section “BACKGROUND” of the opposed application (see Hardwick-1 at [22]), Dr Hardwick states:

“In regards to common general knowledge in the art at the priority date of the opposed application, I consider it was common general knowledge for one or more security devices or features to be provided in or on the substrate of a security document or in or on one or more layers applied to the substrate. Further that these security devices or features may take a wide variety of form, such as:

• security threads embedded in layers of a security document;

• security inks such as fluorescent, luminescent and phosphorescent inks, metallic inks, iridescent inks, photochromic, thermochromic, hydrochromic or piezochromic inks;

• printed and embossed features, including relief structures; interference layers; liquid crystal devices; lenses and lenticular structures; optically variable devices (OVDs) such as diffractive devices including diffraction gratings, holograms and diffractive optical elements (DOEs ).” (Hardwick-1 at [23.9], emphasis added)

117. I note that Dr Hardwick mentions “embossed features, including relief structures” as a separate security device, and not in the context of their use for forming image strips of the lenticular devices.

118. There is no disagreement about the fact that the lenticular devices were known in the art of security devices.  In addition, the Applicant admits that it was also known “that the image strips under the lenticular lenses could be provided by relief structures as identified in Figure 4”, however I note that Figure 4 is not discussed in the specification as prior art (see page 4, lines 5-6; page 8, lines 12-15), and indeed structure H illustrates the claimed invention.  Therefore, on balance, I consider that the Applicant’s admission relates to the fact that it was known to utilise the profiles illustrated on Figure 4 to form the image strips for lenticular devices in general.

119. Based on the evidence on file and relevantly to this decision, I consider the following as part of the common general knowledge of the person skilled in the art at the priority date:

• the use of lenticular devices as security devices;
• the use of relief structures for forming the image strips of lenticular devices in general;
• the fact that thin security devices are preferable for particular applications (e.g. banknotes);
• the fact that thin lenticular devices require a high resolution for forming the image strips;
• the disadvantages of the relief structures as means for forming the image strips of the lenticular devices in general.

The Opponent’s submissions on obviousness and discussion of the evidence

120. Starting with their generic formulation of the problem (which is different to the problem I formulated above), the Opponent states:

“It follows from the summary of the common general knowledge above that it would be obvious to use a lenticular device as an optically variable security device, and to do so using image strips that incorporate relief structures. This was a known method for creating images at an appropriate scale. If there were any doubt about this, then Innovia relies in the alternative on the D8 patent from 1983 as a ‘plus one’ document pursuant to s 7(3) – it clearly discloses such a security device.

The only relevant asserted benefit that Dr Knight puts forward in relation to amended claim 1, and as being a combination not previously disclosed, is the addition of ink to the raised surfaces of the relief structures. Dr Knight asserts that this will result in improved contrast for the inked portions of the images.

It follows that in substance the Applicant is asserting that it is inventive to introduce colouring to parts of the images that underlie the lenticular lenses. It is plain that doing so does not involve even a ‘scintilla’ of inventiveness.” (Opponent’s Summary at [56-58], underlining in the original, emphasis in bold added, reference(s) removed)

121. To support the above submissions on the obviousness of providing ink to the raised features, the Opponent provides further arguments, some exemplified with reference to prior art documents, none of which is said to be information under subsection 7(3) (see Opponent’s Summary at [59]).

122. It appears that the Opponent’s obviousness submissions with respect to the common general knowledge could be summarised as asserting that, in seeking a solution to the problem, it would have been obvious for the person skilled in the art to (i) form the image strips as relief structures, and then it would have also been obvious to (ii) provide ink to the raised features of the relief structures.  I need to consider whether such assertions are supported by the evidence on file, bearing in mind that claim 1 defines a specific type of relief structure with a specific positional relationship between its raised features and the image or non-image areas of the strips.  I also note that, in light of the problem being in part related to achieving good image contrast and good visibility in low light conditions, separating the claimed solution into two consecutive phases (i) and (ii) and arguing that each one of them would have been obvious, as submitted by the Opponent, does not appear, on its face, very convincing as the phase (i) on its own does not address this part of the problem.  It is the combination of the two phases (i) and (ii) as claimed that provides the claimed solution.

123. Turning to the evidence, with respect to the section “BACKGROUND” of the opposed application, Dr Hardwick comments:

“… In the early days, ie the 1990s, the thickness of the substrate with which lenticular devices had to be used was an issue. However, by about the early 2000s improved techniques for creating images enabled thinner substrates to be utilised. For example, laser based techniques and the use of moth eye structures.” (Hardwick-1 at [23.4], emphasis added)

“… I do not agree that commercially available lenticular devices where [sic] prevented from use on or in flexible security documents at the priority date. In this respect, improved techniques for creating images were developed by at least the early 2000s. It is also important to distinguish between the use of lenticular devices on a flexible security document as opposed to in a flexible security document. For example, by using the substrate of a polymer bank [sic] as the spacer between the lens and the image, ie the substrate of polymer bank note as part of the lenticular device, the issue of lenticular devices being relatively thick is alleviated.” (Hardwick-1 at [23.6], emphasis added)

124. I note that Dr Hardwick does not elaborate on the “improved techniques” other than by mentioning the two examples of:

·the “laser based techniques”, without any details on what exactly was produced with these techniques (e.g. relief structures of certain type(s), substrate refractive index modifications, etc.); and

·the “moth eye structures” (see e.g. Figure 4, structure D for illustration) which I consider very different in their operation with respect to the relief structures of claim 1.  

125. Dr Hardwick continues:

“… it is stated that a lenticular device needs to be thin to be integrated into a secure document and that it is not possible to reduce the thickness sufficiently with conventional printing techniques. Following on from this, in the first paragraph on page 3 of the Opposed Application, reference is made to examples of structures in which image strips are formed by a relief. The examples given are a) embossed or debossed structures, and b) diffractive gratings. In relation to embossed or debossed structures, it is stated that they provide little or no contrast to flat background regions and that the use of colour is solely through the colour of the substrate and is therefore limited. I do not necessarily agree with this as there were a number of ways improving contrast, for example with foils and coatings, which were common general knowledge at the priority date.” (Hardwick-1 at [23.7], emphasis added)

126. Even if I assume that these indeed were common general knowledge, I note that Dr Hardwick does not provide any details on how the “foils and coatings” were applied (e.g. on the whole relief structure, on specific parts of it, etc.) and on whether they could include ink (e.g. as distinguished from metal “foils and coatings”).

127. Regarding the issues mentioned in the section “BACKGROUND” of the opposed application (as discussed in Knight at [38] quoted earlier in this decision), Dr Knight comments:

“I have given considerable thought to addressing these issues and have not been able to develop a proposed viable solution that addresses each of these problems.

One possible solution would be to explore trying to use electron beam lithography or micro-lithography to produce sufficiently small diffraction-structure based images. Leaving aside the difficulties I expect I would face in trying to work out how to produce such structures commercially and practically, I would not expect such a solution would overcome or address the problems referred to in (b) and (c) above [(i.e. good image contrast and visibility in diffuse lighting conditions)].” (Knight at [39-40])

128. Given the required standard of proof, I do not consider the evidence on file sufficient to conclude that the use of inked relief structures as defined in claim 1 for forming the image strips of lenticular devices used as security devices would have been obvious to the person skilled in the art in light of the common general knowledge at the priority date. 

129. Since in the alternative, the Opponent relies on US 4,417,784 (D8) (Exhibit BAH-10) as information under subsection 7(3), I will now consider this document.  Regarding document D8, Dr Hardwick comments:

“With reference to Figure 3 of D8, there is disclosed a sheet of transparent material 300 having a lenticular array composed of lenslets 302 embossed on an upper surface. A reflective periodic structure formed as a relief pattern is provided on an opposing surface of the transparent material. In Figure 3, the relief pattern 304 comprises periodically arranged sets of different diffraction grating structures. The different diffractive structures include reflective sinusoidal grating structures (such as grating structure A of Figure 3), reflective rectangular-wave grating structures (such as grating structure B of Figure 3), or a reflective grating structure of any other desired grating profile. The different reflective grating structures forming the relief patterns 304 are selected so that they reflect light with appreciatively different chrominance and/or luminance effects (see column 3, lines 48 to column 4, line 18). … Although D8 does not appear to disclose providing an ink coating on the raised features provided by the relief pattern 304, I consider that it would have been obvious to modify the relief pattern 304 by providing an ink coating on the raised features, thereby arriving at the invention defined in claim 1 of the opposed application. In this regard, I consider that it was common general knowledge at the priority date to provide raised features with an ink coating in order to enhance visibility. … I consider that it would have been obvious to provide ink on raised features of a relief structure of an image strip at the priority date. I also note that D8 discloses that the relief structure 304 may be made reflective by vacuum deposition of a reflective metal coating (see column 4, lines 27-29). Further, in view of the subject matter of this specification, I consider that this specification would have been discovered, considered, and regarded as being relevant at the Priority Date. I consider that it would have been obvious to provide an ink on the relief pattern 304 instead of the reflective metal coating to achieve a similar effect.” (Hardwick-1 at [51], emphasis added)

130. I note that “vacuum deposition of a reflective metal coating” will apparently deposit the coating over the whole relief structure, not only on the raised features as required by the claimed invention (see also Knight at [126]) and providing “an ink on the relief pattern 304 instead of the reflective metal coating” will not change this outcome.

131. In support of his view that “it was common general knowledge at the priority date to provide raised features with an ink coating in order to enhance visibility”, Dr Hardwick refers to the disclosure in US 4,988,126 (D10) (Exhibit BAH-12) and in Rudolf L. van Renesse’s “Optical Document Security”, Third Edition, pages 140-141, section “5.2.5.2 The Transient Image” (part of Exhibit BAH-6).  While both of these documents indeed disclose providing ink on the raised features of a relief structure, importantly, neither of them appears to do this in the context of image strips for a lenticular device.  I consider that the relief structures disclosed in these documents operate differently to a lenticular device and the ink is provided in the context of this different operation.  

132. In summary, it appears that Dr Hardwick considers that it would have been obvious for the person skilled in the art to provide ink to the raised features of the diffraction grating disclosed in D8, without providing sufficient explanations as to the purpose and the results of such a procedure.  I do not find this convincing.

133. Dr Knight comments:

“D8 does not teach the inking of only one or more of the raised regions of a relief structure after formation of such relief structure …

I accordingly consider that D8 does not disclose each of the features of Amended Claim 1. I also do not consider that a skilled person would be led to the invention by D8.” (Knight at [128-129]).

134. I note that the relief structure of claim 1 in not diffractive and hence operates differently in comparison to a diffraction grating.  Therefore, even if I assume that the requirements of subsection 7(3) are satisfied with respect to D8, in order to reach the claimed invention the person skilled in the art would not just need to provide ink to the raised features, but also would need to modify the relief structure such that its operation principle is changed.  I am not presented with sufficient evidence that the person skilled in the art would be motivated to do so.

135. The Opponent also mentions WO 2005/052650 (D9) (Exhibit BAH-11) as an example “of the use of ink to provide highlighting of components of relevant images”, however as admitted by the Opponent, “the method used is applying ink to recesses, rather than raised portions, of a relief structure” (Opponent’s Summary at [59]).  Furthermore, there is no suggestion that D9 was part of the common general knowledge or that it is to be considered as information under subsection 7(3).  With respect to this document, Dr Hardwick simply states “I am familiar with this specification and was aware of this specification at the Priority Date” (Hardwick-1 at [24.10]).  In addition, D9 does not appear to disclose a lenticular device, but a moiré magnification device (see Knight at [79]).

136. In summary, I am not presented with sufficient evidence that using relief structures of the type defined in claim 1 with inked raised features to form the image strips of the lenticular device would be an obvious solution to the formulated above problem in light of the common general knowledge.  I am also not presented with sufficient evidence that the person skilled in the art would be motivated to modify the teaching of D8 and thus reach the claimed invention.

Inventive step – conclusion

137. Based on my analysis, I consider the evidence on file insufficient to establish to the required standard of proof that claim 1 lacks an inventive step in light of the common general knowledge considered either separately or in combination with the disclosure of D8.  The same necessarily applies to dependent claims 2-20 which add further features to those defined in claim 1.

Conclusion and Costs

138. I did not find that the claims are not clear and I did not establish that any one of the claims does not involve an inventive step.  Since my considerations were limited to these two grounds of opposition, it follows that the opposition is unsuccessful on all grounds.

139. During the hearing, the Opponent submitted that, in any event, they should be entitled to their costs up to the date on which the Applicant filed, under section 104, amendments to the specification of the application under opposition.  The Applicant disagreed and submitted that since the case of both parties changed during the opposition (i.e. the Opponent amended the SGP twice), the costs should follow the event.

140. I note that in awarding costs, it is the normal practice that costs should follow the event.  However in the present opposition proceedings, there are circumstances that may warrant a departure from the normal practice.  I will now consider these circumstances. 

141. The Opponent filed their first amended SGP in response to a direction by the Commissioner to provide further and better particulars issued as a result of the Applicant’s request to do so.  I note that this amended SGP was filed together with the evidence in support, but I consider that it could have been filed earlier.  The second amendment to the SGP was filed as a result of the Applicant’s amendments to the specification. 

142. The Applicant’s amendments to the specification were filed as a consequence of the evidence in support, which suggests that the Applicant had some concerns that without the amendments, the opposition could have been successful.

143. To summarise, on one hand, the opposition is unsuccessful on all grounds, the Opponent did not respond earlier to the Commissioner’s direction to provide further and better particulars, and decided not to withdraw the opposition after the amendments to the specification.  However, on the other hand, the specification was amended during the opposition and, based on the extensive consideration and discussions at the hearing devoted to claim interpretation, I do not consider that the ground of clarity raised by the Opponent was unreasonable and without any real possibility of success.   

144. Given the circumstances of this opposition, I consider fair to both parties not to award costs.

Dr V. Z. Kolev
Delegate of the Commissioner of Patents