Innovia Security Pty Ltd v De La Rue International Limited
[2016] APO 78
•3 November 2016
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Innovia Security Pty Ltd v De La Rue International Limited [2016] APO 78
Patent Application: 2010311162
Title:Security device
Patent Applicant: De La Rue International Limited
Opponent: Innovia Security Pty Ltd
Delegate: Dr V. Z. Kolev
Decision Date: 3 November 2016
Hearing Date: 12 August 2016, in Melbourne
Catchwords: PATENTS – opposition to the grant of a patent –
– clarity – fair basis – inventive step – a security device having a lenticular device – two images exhibiting on tilting a colour switch or a switch in appearance – whether the use of “image” renders the claims not clear – whether no registration between the lenticular focusing elements and the corresponding image strips is part of the described invention – whether a positional relationship between the two images is part of the described and claimed invention – whether the independent claims define obvious design choices – opposition fails on all grounds – costs awarded
Representation: Counsel for the Applicant: Mr Tom Cordiner
Counsel for the Opponent: Mr Craig Smith
Patent attorney for the Opponent: Mr Nigel Pereira of Watermark
Also present: Mr Ian Lindsay of Innovia Security Pty Ltd
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2010311162
Title:Security device
Patent Applicant: De La Rue International Limited
Date of Decision: 3 November 2016
DECISION
Lack of clarity, fair basis 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 awarded against Innovia Security Pty Ltd.
REASONS FOR DECISION
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
The matter relates to patent application 2010311162 in the name of De La Rue International Limited (the Applicant). The application was advertised as accepted on 15 January 2015. A notice of opposition under section 59 was filed by Innovia Security Pty Ltd (the Opponent) on 15 April 2015. A statement of grounds and particulars (SGP) was filed on 15 July 2015.
On 12 August 2016, a request under regulation 5.16 to amend the SGP was filed together with an amended SGP. The Applicant was invited to make submissions or indicate whether they wish to be heard in relation to this request. In addition, I invited the Applicant “to indicate by 29 August 2016 whether they wish to provide additional submissions and/or evidence in relation to the matters [affected by the amendment], in case the request to amend the Statement of Grounds and Particulars is allowed”. No response was received to either invitation. The request to amend the SGP was allowed on 01 September 2016.
The evidence in support was completed on 15 October 2015, the evidence in answer was completed 14 January 2016, and the evidence in reply was completed on 18 March 2016.
The Opponent's Outline of Submissions for Hearing (Opponent’s Summary) was filed on 29 July 2016. The Summary of Patent Applicant’s Submissions (Applicant’s Summary) was filed on 05 August 2016.
Applicable Law and Onus
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]).
The request for examination with respect to the opposed application was filed on 18 March 2013, therefore the standard of proof mentioned above 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.
It is well settled that the Opponent has the onus of establishing the facts supporting the grounds of opposition.
Grounds of Opposition and Evidence
The amended SGP lists three grounds of opposition: lack of clarity; lack of fair basis; and lack of inventive step. Importantly, the previous ground of lack of novelty present in the original SGP was removed and no longer appears in the SGP as amended.
The evidence in support consists of:
·A declaration of Dr Bruce Alfred Hardwick dated 09 October 2015 (Hardwick-1) with Exhibits BAH-1 to BAH-16;
·A declaration of Mr Jonathan Moon dated 14 October 2015 (Moon-1) with Exhibits JM-1 to JM-9 (JM-1 to JM-4 being video clips);
·A declaration of Mr Philip Peter Gottfried dated 13 October 2015 (Gottfried) with Exhibits PPG-1 to PPG-28.
The evidence in answer consists of:
·A declaration of Dr Malcolm Robert Murray Knight dated 13 January 2016 (Knight) with Exhibits MK-1 to MK-7.
The evidence in reply consists of:
·A declaration of Dr Bruce Alfred Hardwick dated 16 March 2016 (Hardwick-2) with Exhibits BAH-17 to BAH-23 (BAH-17 to BAH-20 being video clips);
·A declaration of Mr Jonathan Moon dated 18 March 2016 (Moon-2).
The Specification
The specification 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 3-6).
The security device has a lenticular device comprising an array of lenticular focusing elements located over a corresponding array of pairs of image strips such that, on tilting the device, a colour switch effect (or a switch in appearance effect) between two images is observed. The switch effect is best illustrated in the specification with reference to Figures 4a and 4b (reproduced below for reference) where the two images are the star and its background:
Fig. 4a from the application under opposition
“Figures 4A and 4B illustrate a first example of a security device according to the invention. In this device, an array of cylindrical lenses 2 is provided on a transparent substrate 4, as before, while pairs of image strips A,B are provided on the other side of the substrate 4 located at the focal distance of each lens. In this case, the strips A,B are registered with [i.e. are in a fixed specific positional relationship, e.g. precisely underneath] each lens 2. When the device is viewed from the right, as seen in Figure 4B, the image strips A will be seen in the region of the star through each lens 2 and when the device is viewed from the left, the image strips B will be seen in the region of the star. The resulting appearance of the device is shown in Figure 4A where view A corresponds to viewing the device from the right in Figure 4B and view B corresponds to viewing the device from the left in Figure 4B.” (page 9, line 30 – page 10, line 7)
Fig. 4b from the application under opposition
The specification ends with 47 claims, claims 1, 8, 30, and 36 being independent and reproduced below:
“1. A security device having a lenticular device comprising an array of lenticular focusing elements located over a corresponding array of pairs of image strips such that, in a first viewing direction, a first image strip from each pair is viewed by respective ones of the lenticular focusing elements and, in a second viewing direction, different from the first, a second image strip from each pair is viewed by respective ones of the lenticular focusing elements characterized in that one of each pair of image strips has portions defining a first image in a first colour and a second image in a second colour respectively, and the other of each pair of image strips has portions defining the first image in the second colour and the second image in the first colour respectively, whereby on tilting the device, a colour switch is observed between the first and second images.
8. A security device having a lenticular device comprising an array of lenticular focusing elements located over a corresponding array of pairs of strips such that, in a first viewing direction, a first strip from each pair is viewed by respective ones of the lenticular focusing elements and, in a second viewing direction, different from the first, a second strip from each pair is viewed by respective ones of the lenticular focusing elements characterized in that one of each pair of strips has one or more opaque portions defining a first image and one or more transparent portions defining a second image or background respectively, and the other of each pair of strips has one or more transparent portions defining the first image and one or more opaque portions defining the second image or background respectively, whereby on tilting the device, a switch in appearance is observed between the first and second images or background.
30. 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 pairs of image strips on the other side of the transparent substrate, the image strips and lenticular focusing elements defining a lenticular device such that, in a first viewing direction, a first image strip from each pair is viewed by respective ones of the lenticular focusing elements and, in a second viewing direction, different from the first, a second image strip from each pair is viewed by respective ones of the lenticular focusing elements characterized in that one of each pair of image strips has portions defining a first image in a first colour and a second image in a second colour respectively, and the other of each pair of image strips has portions defining the first image in the second colour and the second image in the first colour respectively, whereby on tilting the device, a colour switch is observed between the first and second images.
36. 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 pairs of strips on the other side of the transparent substrate, the strips and lenticular focusing elements defining a lenticular device such that, in a first viewing direction, a first strip from each pair is viewed by respective ones of the lenticular focusing elements and, in a second viewing direction, different from the first, a second strip from each pair is viewed by respective ones of the lenticular focusing elements characterized in that one of each pair of strips has one or more opaque portions defining a first image and one or more transparent portions defining a second image or background respectively, and the other of each pair of strips has one or more transparent portions defining the first image and one or more opaque portions defining the second image or background respectively, whereby on tilting the device, a switch in appearance is observed between the first and second images or background.”
Claim 47 is a dependent omnibus claim.
Clarity under Subsection 40(3)
The only clarity issue raised by the Opponent is a consequence of their submission that “[t]he scope of the word 'image' as used in each relevant claim (including each of the independent claims, being claims 1, 8, 30 and 36) is unclear” (Opponent’s Summary at [77]).
Interpretation of the terms in question
I generally agree that the word “image” may have a very broad meaning, however I note that the terms used in the claims must be interpreted in the context of the claims. Hence the relevant question I need to be able to answer is what is the interpretation of the terms “first image” and “second image” as used in the claims.
In the case of claim 1, there are several limitations imposed by the context. In that respect, I firstly note the expressions: “defining a first image in a first colour and a second image in a second colour”, “defining the first image in the second colour and the second image in the first colour”, and “… whereby on tilting the device, a colour switch is observed between the first and second images”. These, in the broader context of the claim, indicate that the colour switch is observed on tilting between the first and second viewing directions and the first and second images must be designed such that, in each of the first and second viewing directions:
(i) they are both observable and visually distinguishable from their surroundings (i.e. having well defined boundaries consisting of notional contour line(s) which visually separate an area forming part of the image from an area not forming part of this image);
(ii) each one of them is of a single colour (i.e. either the first or the second colour); and
(iii) the two images are of a different colour with respect to each other.Further, since the colour switch between the first and second images is observed due to the design of the lenticular device,
(iv) neither image can extend beyond the boundaries of the lenticular device and (parts of) the boundaries of the lenticular device may serve as (parts of) the outer boundaries of one or both of the images.
In addition, the combination of the above quoted expressions “defining a first image in a first colour and a second image in a second colour” and “defining the first image in the second colour and the second image in the first colour”, i.e. the first image defined in the second colour is the same first image that is also defined in the first colour (the same applies for the second image), implies that
(v) when the colour switch is observed, each one of the two images must be perceived as the same image (not changing), but in a different colour.
Finally, the expression “one of each pair of image strips has portions defining a first image in a first colour and a second image in a second colour respectively, and the other of each pair of image strips has portions defining the first image in the second colour and the second image in the first colour respectively” means that
(vi) the first and second images must at least partially “overlap” in the direction along the length of the lenticular focusing elements and their corresponding image strips (i.e. the lenticular device is “comprising an array of lenticular focusing elements” designed such that, in each of the first and second viewing directions, each one of the lenticular focusing elements of the array is viewing portions of both the first and second images).
For example, this is illustrated on Figure 4a (see above) where the two images (i.e. the star and its background) partially “overlap” in the direction (horizontal in the drawing) along the length of the lenticular focusing elements and their corresponding image strips. The “overlap” is partial, because the top few and the bottom few of the lenticular focusing elements view only portions of the background and not of the star; hence I consider these top and bottom lenticular focusing elements and their corresponding pairs of image strips as part of the lenticular device, but not part of the array defined in the claim.
Therefore, in the context of claim 1, I consider that the terms “first image” and “second image” refer to graphical representations consisting of one or more regions, the graphical representations having the above described properties (i) to (vi).
I note that some of the described and illustrated colour switching embodiments appear outside the scope of claim 1. For example, if I consider an embodiment based on what is illustrated in Figure 26 (reproduced below), the two images (i.e. the star and the numeral five) do not overlap at all in the direction (again horizontal in the drawing) along the length of the lenticular focusing elements and their corresponding image strips. Therefore no image strip “has portions defining a first image in a first colour and a second image in a second colour” as required by the claim.
Fig. 26 from the application under opposition
In a further example, Figures 6g and 6i (reproduced below) illustrate devices as they are observed in three viewing directions. Importantly, it is impossible to identify two viewing directions in which two visually distinguishable images exhibit the required colour switch. Considering for example “View A” and “View B” as the first and second viewing directions, the size of the visually distinguishable star is different, therefore I do not consider that the star can be perceived as the same image but in a different colour (the same applies to the background).
Figs 6g and 6i from the application under opposition
For comparison, the size of the visually distinguishable star illustrated on Figure 6e (reproduced below) does not change on tilting, hence I can consider this star as one of the first and second images, the background (which also does not change size on tilting) being the other one.
Fig. 6e from the application under opposition
I can apply similar interpretation, mutatis mutandis, to the terms “first image” and “second image” in the context of claim 8, replacing the first and second colours with the properties of opacity and transparency.
In addition, with respect of the terms “first image” and “second image”, claims 30 and 36 provide very similar context as compared to claims 1 and 8, respectively, and I can see no reason to adopt different interpretation for these terms as used in claims 30 and 36.
Opponent’s submissions on clarity
Having interpreted the terms in question, I will consider the Opponent’s arguments with respect to clarity. To support their view that the word “image” is unclear, the Opponent submits (Opponent’s Summary at [79]):
“There are three principal issues that arise with the clarity of the term 'image' in the claims (as expanded upon below with relevant examples):
(a) the 'boundary' issue – that is, what boundaries relevantly define a relevant 'image';
(b) the precision issue – that is, how precisely must an image be defined; and
(c) the relationship issue – that is, what relationship must exist between the two images.”I will address these issues separately adopting for consistency the Opponent’s terminology.
The 'boundary' issue
With respect to the MoMA magnet lenticular device (part of Exhibit JM-5 as reproduced below), the Opponent comments:
“He [Dr Knight] accepts that the first letter 'M' has changed colour (from orange to black), but he looks not at the 'not M' immediately surrounding portion that has changed colour (from black to orange), but instead looks for a corresponding external boundary to such a region in order to define the necessary second 'image'. What is unclear is why the 'not M' region is not a relevant 'image' for the purpose of the claims – it provide precisely the same 'bonus effect' that is relied on in respect of the asserted invention more generally, including as illustrated by the star/not star example [Figure 4a from the application under opposition] – that is, a part of the image where there is an 'exchange of visual appearance'”. (Opponent’s Summary at [81], references removed)
MoMA magnet lenticular device, part of Exhibit JM-5
I do not consider “the 'not M' immediately surrounding portion that has changed colour” as the first or second image because, it is not visually distinguishable from its surroundings since it does not have well defined boundaries. I accept that the inner boundary of this portion is the outer contour of the first letter “M”. However if one attempts to define some form of external or outer boundary for this “immediately surrounding portion” this will be entirely imaginary boundary which will not satisfy the requirements as discussed above of being a notional contour line which visually separates an area forming part of the image from an area not forming part of this image. On the other hand, the visually distinguishable black circle at 0 seconds and the corresponding orange circle at 4 seconds cannot reasonably be perceived as the same image but of a different colour.
Regarding the comparison of the MoMA magnet lenticular device with the device illustrated on Figure 4a of the application, I agree with the Opponent that “[t]he outer boundaries of the 'not star' 'image' appear to be fixed by the boundaries of the device, which is a square shape” (Opponent’s Summary at [80(b)]). Indeed, it is exactly this fact that results in “the 'not star' 'image'” being perceived, on tilting the device, as the same image but of a different colour, thus allowing me to consider “the 'not star'” (i.e. the whole “not star” region, not just the portion immediately surrounding the star) as one of the first and second images.
Vari-Vue examples (a), (b), and (c), Exhibit PPG-5
The Opponent further comments with respect to Exhibit PPG-5 as reproduced above:
“In relation to the Vari-Vue examples from Exhibit PPG-5, Mr Knight says that the light bulb example [(a)] is not a direct colour inversion. It is unclear whether this is because Mr Knight relies on a strict colour equivalence (asserting that one is white while the other is yellow), or whether he does not accept that the outline of the light bulb is itself an 'image'. However, the issue of the outline also illustrates the difficulties with the notion of an 'image', since in the Application this potentially overlaps with what the Application describes as an 'intermediate region'.” (Opponent’s Summary at [82])
Following my interpretation, I can see no reason why the outline of the light bulb in the Vari-Vue examples (Exhibit PPG-5(a)) cannot be one of the first and second images as long as it satisfies the requirements (i) to (vi) listed above. As to whether Exhibit PPG-5(a) displays a colour switch as claimed, I consider the quality of the reproduction insufficient to ascertain with any degree of certainty whether the colours are close enough to be perceived as the same colour (importantly, Mr Gottfried, the Expert for the Opponent, does not consider this to be the case, see Gottfried at [16(a)]), and whether, on tilting the device, the body and the outline of the light bulb can still be perceived as the same images but of a different colour.
With respect to the term “intermediate region”, I note that what is defined (e.g. in dependent claims 2 and 4) is “[a] security device … further comprising an intermediate region extending between the first and second images”. Therefore, in both the first and second viewing directions, the intermediate region must be separate and visually distinguishable from both the first and the second image, e.g. the star outline as illustrated on Figure 6e (see above). If in one of the viewing directions, the intermediate region is of the first or second colour (as suggested in claim 4, but not necessarily so defined), this region must be physically separated from the image having the same colour. Otherwise, the situation illustrated in Figures 6g and 6i would occur as discussed above. In that respect, I do not consider “extending between the first and second images” to require “touching” the first and second images.
The 'precision' issue
Regarding Dr Knight’s interpretation of Exhibit PPG-5(b), the Opponent submits:
“For the second of the Vari-Vue examples (an extract of which is reproduced below), Mr Knight says that there is no 'direct colour inversion as recited in claim 1'. Yet there is a clear colour inversion between at least two rectangular images (there being many more than two such images). Mr Knight's addition of the word 'direct', not being a word used in the claims, appears to suggest that the presence of additional features (the writing within each of the rectangles) means, in his view, that the requisite 'colour switch' between the two 'images' does not occur. But again, the asserted benefits of the 'bonus effect' relied on by the Applicant would presumably still occur even if there are details or features that do not change colour.” (Opponent’s Summary at [83], emphasis in the original, references removed)
As I mentioned earlier, the claims require that each one of the first and second images is of a single colour. Each rectangle includes writing in one colour and a background in a different colour. Hence I cannot consider these “rectangular images” as the first or second image. I agree that the background in each rectangle is of a single colour which changes on tilting the device, however because the writing in the rectangle also changes on tilting, so does the background itself and it cannot be perceived as the same image but of a different colour. Similarly, since not just its colour, but the writing itself is changing on tilting the device, I cannot consider the writing as one of the first and second images. Therefore, I do not consider that Exhibit PPG-5(b) displays a colour switch as defined.
Regarding the example of a kangaroo icon (Opponent’s Summary at [85] and [88], the drawing reproduced below), again as with the outline of the light bulb, I cannot see why “the eye, the line along the back, or the two hopping marks” should not be considered as first or second images as long as they satisfy the requirements (i) to (vi) discussed above.
Example drawing from the Opponent’s Summary
The 'relationship' issue
The Opponent submits that:
“The final issue that arises is that the claims do not describe the relationship between the two 'images' other than that there must be a colour switch, or a transparent/opaque switch between them. But that may occur between two unconnected 'images' that are not physically proximate within a more complex design. The claims are not limited to the case where only two 'images' are used in the device, nor do they define or require any particular physical relationship between the two images (for example that they be adjacent, or that they share at least one common boundary).” (Opponent’s Summary at [86])
As I already discussed, the claims require that the first and second images are within the same lenticular device and, in both the first and second viewing directions, they must be observable and must at least partially “overlap” in the direction along the length of the lenticular focusing elements and their corresponding image strips. I do not consider that a more specific “relationship between the two 'images'” is defined, and in that respect, I agree with the Opponent, however I fail to see how this affects the clarity of the claims.
To demonstrate the asserted clarity issue, the Opponent asks the question:
“Taking the ruler example above [Exhibit PPG-5(b)], if the top left rectangle, and the bottom right rectangle, were both blank (had no writing), and exhibited a colour switch, would that satisfy the claims?” (Opponent’s Summary at [87])
Based on my interpretation of the terms “first image” and “second image”, the answer to this question would be: yes, if in addition, the ruler example were to disclose a security device and the rectangles in question at least partially “overlap” in the direction along the length of the lenticular focusing elements and their corresponding image strips (which, in the hypothetical scenario suggested by the Opponent, would require a somewhat diagonal orientation of the lenticular focusing elements and their corresponding image strips with respect to the ruler).
Clarity summary
I was able to interpret unambiguously the terms “first image” and “second image” in the context of the claims. Following this interpretation, I was able to address all clarity issues raised by the Opponent. Furthermore, I do not consider the consideration of the provision or otherwise of the same “bonus effect” (Opponent’s Summary at [81], [83], and in substance [87]) necessary for resolving the issues of clarity. Therefore, I am not satisfied that the use of the terms “first image”, “second image”, and “intermediate region” results in the claims being not clear.
Fair Basis under Subsection 40(3)
I agree with both parties that the leading recent authority on fair basis is Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58; 217 CLR 274; 212 ALR 1; 79 ALJR 260 (Lockwood No. 1). Some relevant quotations are provided below:
“The approach required by s 40(3)
Erroneous principles. The comparison which s 40(3) calls for is not analogous to that between a claim and an alleged anticipation or infringement. It is wrong to employ "an over meticulous verbal analysis". It is wrong to seek to isolate in the body of the specification "essential integers" or "essential features" of an alleged invention and to ask whether they correspond with the essential integers of the claim in question.
"Real and reasonably clear disclosure". Section 40(3) requires, in Fullagar J's words, "a real and reasonably clear disclosure." But those words, when used in connection with s 40(3), do not limit disclosures to preferred embodiments.
"The circumstance that something is a requirement for the best method of performing an invention does not make it necessarily a requirement for all claims; likewise, the circumstance that material is part of the description of the invention does not mean that it must be included as an integer of each claim. Rather, the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification."
Fullagar J's phrase serves the function of compelling attention to the construction of the specification as a whole, putting aside particular parts which, although in isolation they might appear to point against the "real" disclosure, are in truth only loose or stray remarks.” (Lockwood No. 1 at [68-69], emphasis in the original, references removed)
“… The words "fairly based" refer to a relationship between what is claimed in the claims and what is described in the body of the specification. They do not refer to abstract fairness.” (Lockwood No. 1 at [95])
“… the correct position is that a claim based on what has been cast in the form of a consistory clause is not fairly based if other parts of the matter in the specification show that the invention is narrower than that consistory clause. The inquiry is into what the body of the specification read as a whole discloses as the invention. An assertion by the inventor in a consistory clause of that of which the invention consists does not compel the conclusion by the court that the claims are fairly based nor is the assertion determinative of the identity of the invention. The consistory clause is to be considered by the court with the rest of the specification.” (Lockwood No. 1 at [99], reference removed)
Opponent’s submissions on fair basis and considerations
The Opponent asserts that there are two aspects of the issues with the fair basis:
“The claim is not limited to be of the same scope as the asserted benefit
As submitted above, the claims of the Application are infringed whether register is tightly controlled or not, and accordingly the claims travel beyond what is disclosed as being the invention.” (Opponent’s Summary at E.2. and [92], emphasis removed)
and
“The claim is not limited to where there is a relationship between the two 'images'
Further to section D.2.3 of this outline above, the claims of the Application travel beyond what is disclosed as being the invention as they include lenticular devices where there is no clear or proximate relationship between the two 'images'. The description of the invention in the Application is of a lenticular device where there is a direct exchange of visual appearance between the two images, which is asserted will result in there not being a need to control the registration of the lenses and underlying images.” (Opponent’s Summary at E.3., and [93], emphasis removed)
With respect to the first issue, I note that the Opponent has not provided an analysis of “what the body of the specification read as a whole discloses as the invention” to support the asserted lack of fair basis. Apparently, the Opponent considers not having a register between the lenticular focusing elements and the corresponding image strips (or not tightly controlling this register) as part of the disclosed invention. I do not agree that “the body of the specification read as a whole” supports such a conclusion. I consider the most relevant parts as follows:
“Although the pairs of image strips need not be registered with the lenticular focusing elements, they should have a similar periodicity.” (page 6, lines 6-7, emphasis added)
“Figures 4A and 4B illustrate a first example of a security device according to the invention. In this device, an array of cylindrical lenses 2 is provided on a transparent substrate 4, as before, while pairs of image strips A,B are provided on the other side of the substrate 4 located at the focal distance of each lens. In this case, the strips A,B are registered with each lens 2. When the device is viewed from the right, as seen in Figure 4B, the image strips A will be seen in the region of the star through each lens 2 and when the device is viewed from the left, the image strips B will be seen in the region of the star. The resulting appearance of the device is shown in Figure 4A where view A corresponds to viewing the device from the right in Figure 4B and view B corresponds to viewing the device from the left in Figure 4B.” (page 9, line 30 – page 10, line 7, emphasis added)
“In the example just described, the image strips A,B are registered with the lenses 2. The exact registration of the image strips and the lens enables the device to be configured such that it is known at what angle the different views are observed, i.e. in reference to Figure 4A such that the black star is always observed when tilting forwards and the black background is always observed when tilting backwards. However, registration is not essential and Figure 6b illustrates an example in which the image strips are not registered.” (page 11, lines 23-29, emphasis added)
I consider that what is disclosed is that the registration is not needed or essential, but this is not the same as that there should be no registration at all.
Considering the second issue, I agree with the Opponent that “[t]he description of the invention in the Application is of a lenticular device where there is a direct exchange of visual appearance between the two images”. However I consider that this direct exchange (i.e. colour switch, or switch in appearance) is clearly defined in the independent claims as already discussed above with respect to clarity.
In summary, based on the above analysis, I am not satisfied that the claims are not fairly based.
Inventive Step under Subparagraph 18(1)(b)(ii) and Subsection 7(2)
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])
In Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) [2007] HCA 21; (2007) 235 ALR 202; 81 ALJR 1070, is 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, references removed)
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
Apparently there is no disagreement between the parties with respect to the problem being solved by the claimed invention:
“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 [51])
“The Applicant generally accepts the statement of the problem known to the hypothetical person skilled in the art at OS[51], namely the desire to make an optically variable device for use as a security device that would provide a means of ready authentication of a security document, by a professional or a consumer, and be difficult to counterfeit as compared to documents without such security devices.” (Applicant’s Summary at [8.8])
The instant application under opposition explains:
“Many different optical security devices are known of which the most common are holograms and other diffractive devices which are often found on credit cards and the like…. It is also well known to use thin film interference structures, multilayer polymeric structures and liquid crystal structures to generate angularly dependent coloured reflection…. The problem with these materials is that they are typically expensive and the range of possible colours is limited by the fundamental optical characteristics of the materials.” (page 1, lines 7-19)
“It has also been known that so called lenticular devices can be used as security devices…. Typically, the microprinting used with these lenticular devices comprises strips of different colours such that when a device, such as a thread, is viewed at different angles, different colours will be perceived. One of the problems with this approach is the need for a very precise register between the microlenses and microprinting.” (page 1, lines 26-31)
“It is desired to provide a security device, an article, and a method of manufacturing a security device, that alleviate one or more difficulties of the prior art, or to at least provide a useful alternative.” (page 2, lines 21-23)
“With this invention, we provide a simple but secure security device which is easy to verify. This is because the observer will see a simple colour switch between the first and second images irrespective of the registration between the focussing elements and the image strips.” (page 3, lines 15-18)
Having considered the redacted version of the background part of the instant specification, the Expert for the Applicant, Dr Knight, states:
“The challenge posed by the extract is to provide a security device that is easy to verify by untrained observers, is relatively easy and inexpensive to produce, and can provide a wide variety of different colours.” (Knight at [36]).
Without conclusively deciding the issue, I am prepared to accept the more general formulation of the problem as proposed by the Opponent and generally agreed to by the Applicant. Hence I will not consider the potential registration issues in the lenticular security devices mentioned above as part of the problem.
The person skilled in the art and the common general knowledge
Again, I can see no substantial disagreements between the parties, and I am prepared to accept their submissions.
Referring to Knight at [10-11, 21-22] and Hardwick-1 at [10, 16, 18-20, 22] 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 [19-20], emphasis in the original, references removed)
The Applicant does not expressly disagree, but points out that:
“Generally, the skilled addressee has been identified as a hypothetical non-inventive worker in the field, though depending on the field, that person may be highly skilled and knowledgeable: Aktiebolaget Hässle and Another v Alphapharm Pty Limited [2002] HCA 59; (2002) 212 CLR 411 (Alphapharm) at 426 [30], 434 [55]; see also H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70; (2009) 177 FCR 151 at [52] to [53].
The non-inventive worker in the field normally excludes, for example, patentees and others of particularly inventive disposition: see eg, Abbott Laboratories v Corbridge Group Pty Ltd (No 2) [2001] FCA 810 at [56]; Doric Products Pty Ltd v Lockwood Security Products Pty Ltd (2001) 53 IPR 270; [2001] FCA 1877 at [165]; Gambro Pty Ltd v Fresenius Medical Care South East Asia Pty Ltd (2004) 61 IPR 442; [2004] FCA 323 at [401].” (Applicant’s Summary at [5.2-5.3], emphasis in the original)
The Applicant concludes:
“The skilled addressee of AU’162 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)
In addition, “[t]he Applicant also accepts that lenticular devices were known to the person skilled in the art at the priority date in security devices. They were one of many choices available.” (Applicant’s Summary at [8.9])
The Opponent’s submissions on obviousness
Given that the use of lenticular devices in security devices was part of the common general knowledge in Australia at the relevant date, the Opponent submits:
“In deciding to incorporate a lenticular device into a security document, it was obvious to do so using any obvious combination of patterns, colours or shapes.” (Opponent’s Summary at [55], bold text in the original, underlining added)
Although I generally agree with the above statement, I do not find it helpful in that it leaves open the question of which “combination[s] of patterns, colours or shapes” are obvious and which not.
Importantly, I note that the Opponent does not rely on any evidence to positively establish the obviousness of the particular image design and optical effect defined in the independent claims or indeed to prove to the required level of certainty that any “combination of patterns, colours or shapes” would be obvious. Instead, it appears that the Opponent puts more emphasis on the lack of suggestions to the contrary (Opponent’s Summary at [56]).
The Opponent’s analysis continues:
“The simplest embodiment of a lenticular device is to have a switch between two overall images/designs only (that is, to have only two image strips beneath each lenticular lens).
One of the simplest design embodiments in having a switch between two images is to have the colours of those two images switch.” (Opponent’s Summary at [57-58])
While I agree with the first of the above statements, I find it difficult to accept the second one in the absence of convincing evidence. Indeed, having “only two image strips beneath each lenticular lens” is the “simplest embodiment of a lenticular device”, however this can be used to produce a vast variety of optical effects based on switching between two observable design patterns.
Claim 1 defines a very specific lenticular device and a corresponding optical effect as already discussed with respect to clarity and the Opponent implicitly admits (by removing the ground of novelty) that the defined optical effect has not been used in a security device. At the hearing, the Opponent clarified their submissions that since a large number of specific pattern designs were never used in security devices, this does not mean that they are not obvious. They continued by illustrating their point with a hypothetical example of a very specific star shape, which might have never been used in a security device, but nonetheless would be considered an obvious design choice. I must note that the application under opposition is not concerned with the specific shape or graphical design of the first and second images, but with a specific optical effect employing the two images regardless of their shapes. Without sufficient evidence, it is unclear to me why designing a security device including this specific optical effect would be obvious for the person skilled in the art.
Twister (Geo Tile) device, part of Exhibit JM-5
The Opponent further asserts that “[t]he use of known and obvious design options was obvious and formed part of the public domain” (Opponent’s Summary, the title of section C.2.4., emphasis removed). Here, I note the use of “public domain” and not “common general knowledge”. Even if I accept that the colour switching effect between two images as defined in claim 1 was used before the priority date, as it will be discussed later in this decision, I do not find this fact alone sufficient to establish the obviousness of the independent claims (in particular claim 1) to the required level of proof.
The examples showing the relevant colour switching effect are:
·the MoMA magnet lenticular device (Exhibits JM-1 (video) and part of JM-5 as already reproduced above) with respect to the letter “o” as discussed in more detail later in this decision;
·the Twister (Geo Tile) device (Exhibits JM-3 (video) and part of JM-5 as reproduced above for reference) as again discussed in more detail later in this decision; and
·the Pediamycin advertisement (Exhibit PPG-5(c) as already reproduced above).
However, in two out of the three devices above (the MoMA magnet and the Twister (Geo Tile) device), the colour switching effect as defined in claim 1 forms part of a more complex optical effect and its presence does not appear immediately identifiable. In fact, the effect in the MoMA magnet lenticular device with respect to the letter “o” does not appear to have been mentioned by any of the Experts. Hence, given that the colour switching effect is present as an auxiliary effect to achieve a more complex optical effect, it remains uncertain if the person skilled in the art considering the whole complex optical effect would even appreciate the existence of the effect of claim 1 without specifically looking for it (i.e. without the benefit of the hindsight).
The only device which apparently specifically employs the colour switch defined in claim 1 is the Pediamycin advertisement sign Exhibit PPG-5(c), however this device is not in the field of the application under opposition.
Dr Hardwick states:
“My colleagues and I were also interested in printed display devices in other fields, such as the entertainment and advertising industries, that could be used in the security printing industry. For instance, I recall that when NPA was developing lenticular devices in the early 2000s we were interested in lenticular devices such as the children's toys, Tazos, and advertising displays, both of which contained lenticular imagery.” (Hardwick-1 at [21])
This statement, although indicating that the person skilled in the art would possibly be aware of some relevant developments in other fields, does not provide sufficient evidence that the optical effects employed in the Pediamycin advertisement as well as the other abovementioned devices exhibiting the optical effect of claim 1 formed part of the common general knowledge in Australia at the relevant date.
Given the Opponent’s onus and the level of proof, I am not satisfied that the Opponent’s submissions establish the obviousness of claim 1 in light of the common general knowledge.
With respect to claim 8, the Opponent submits:
“Where an image is printed on a transparent substrate, as commonly occurred with
banknotes for example, a switch between the transparent and the opaque portions is an even clearer design option, given the more limited design parameters available for selection.” (Opponent’s Summary at [59])I cannot see why “[w]here an image is printed on a transparent substrate”, the transparency of the substrate must always be utilised, e.g. why a colour switch between two opaque portions should necessarily be excluded, resulting in “the more limited design parameters available for selection”. More importantly, the Opponent does not provide any prior art or other evidence to support their view. As already discussed earlier in this decision, obviousness is a question of fact that is to be established by evidence. Therefore, I cannot be satisfied that the Opponent’s submissions establish the obviousness of claim 8 in light of the common general knowledge.
The remaining two independent claims (i.e. claims 30 and 36) are method claims defining similar features, mutatis mutandis, to those defined in claims 1 and 8, respectively; therefore I am similarly not satisfied that the Opponent’s submissions establish the obviousness of claims 30 and 36 in light of the common general knowledge.
I note that in the amended SGP, the Opponent suggested that:
“The claimed invention is obvious in view of each of D1-D13 when considered in light of the common general knowledge before the priority date, and therefore does not involve an inventive step.” (SGP at [2.4.], emphasis in the original)
However, the Opponent has not provided any submissions demonstrating, with reference to the evidence, the obviousness of the claims in light of any of these documents.
In summary, I am not satisfied that the Opponent has presented an evidence-based analysis with respect to any claim, demonstrating a lack of inventive step in light of the common general knowledge either considered separately or together with any of the prior art documents submitted in evidence.
Discussion of the evidence
Although as discussed above, the Opponent does not rely on evidence to positively establish the obviousness; for completeness, I will consider the evidence on file and its relevance to this question. The Opponent provided evidence by three Experts: Mr Gottfried, Mr Moon, and Dr Hardwick. The Applicant provided evidence by one Expert, Dr Knight.
I note that somewhat significant portion of the evidence on file relates to novelty which is a ground not mentioned in the amended SGP. The issue of registration of the lenticular array with the image strips is also discussed, however this was not considered part of the problem as formulated above, hence these discussions do not appear highly relevant to the question of obviousness. In addition, I do not consider the claimed invention to be limited to thin security devices suitable for use in banknotes or similar relatively thin articles of value, and discussions of this matter also do not appear relevant.
The evidence of Mr Gottfried
Mr Gottfried’s analysis of claim 1 is presented below:
“According to claim 1 of the Opposed Application, one or each pair of image strips has portions that define a first image in a first colour and a second image in a second colour and the other of each pair of image strips has portions defining the first image in the second colour and the second image in the first colour respectively. Observing the image tilting, results in a visible color change from one image to the other. This is describing a common lenticular effect where the lenticular device presents a flip or two phase effect. To one skilled in the art of lenticular imaging this effect is called an inversion or positive/negative flip mage [sic] effect. As an example a black and white image is used as the first image and an inverted or negative version of the same image is used as the second, thus creating a color reversal lenticular effect. Specifically, the second image is made such that the white areas of the first image are black and the black areas are white. In the prior art any two or more colors can be used.
This type of flip effect is shown in examples of Vari-Vue devices (Exhibit PPG-5), which were publicly available from the early 1950's to the early 1980's. … These devices were created by Vari-Vue, which is a lenticular printing company started in 1948 and closed in early 1980's….” (Gottfried at [15-16], emphasis added)
With respect to the three examples of Vari-Vue devices illustrated in Exhibit PPG-5 (a), (b), and (c), Mr Gottfried explains:
“(a) The image shows a light bulb that turns off and on. The first image shows the light bulb in yellow with a black out line and it changes to a black bulb with a white outline.
(b) This vintage lenticular VariVue flicker “winky” ruler measures a full 12 inches long inches and flips between metric and USA calculations. And, it also shows each US fractional measurement and it's decimal equivalent
(c) This is another Vari-Vue Motion Lenticular device, also called “Flasher” or “Flicker” or “Wiggle”. This one is a vintage 1970's Vari-Vue advertisement for: "Pediamycin" antibiotic. The device displays a two color image of orange text on red background that changes to red text on orange background depending on the viewing angle.” (Gottfried at [16], emphasis added)In fact, the only example showing a colour switch as defined in claim 1 is the advertisement for Pediamycin described at (c). I have already discussed the ruler example (b) in some length when commenting on clarity. With respect to the light bulb example (a), Mr Gottfried clearly states that the outline changes to white, not to yellow as it would be required by claim 1.
In addition, Mr Gottfried considers that all of the features of claim 1 are disclosed in each one of WO 2010/099571 A1 (D1); US 61/157,309 (D1-PD) which is the priority document of D1; US 6,329,987 B1 (D2); and US 2008/0309063 A1 (D3).
Document D1 was published after the priority date of the opposed application. This priority date was not challenged by the Opponent (Opponent’s Summary at [13]), and the disclosure in D1 can potentially only be used under paragraph 7(1)(c) of the Act, sometimes called “whole of contents” novelty. Hence the disclosure of D1-PD becomes important to establish the priority date of the matter disclosed in D1. With respect to D1 and D1-PD, Mr Gottfried states:
“… In D1 and D1-PD it is also mentioned that the printed halftone dots can represent digital pixels of printed images (see page 14, lines 25-26 of D1 and page 14, lines 3-4 of D1-PD). Therefore, one of the image strips of halftone dots in Figures 1 and 2 of D1 and D1-PD can have portions defining a first image in a first colour, (eg black) and portions defining a second image in a second colour, (eg white) and the other of the image strips can have portions defining the first image in the second colour (white), and portions defining the second image in the second colour (black). When the device is tilted between the two viewing angles, a colour switch is observed between the first and second images. Such a visual effect is described in more detail in D1 in the Example of Figure 16.
I therefore consider that all of the features of claim 1 of the Opposed Application are present in D1 and its priority document D1-PD.” (Gottfried at [37-38], bold text in the original, underlining added)
I presume that the underlined expression “the second colour (black)” should read “the first colour (black)”.
Similar reasoning strongly relying on Figure 16 and the corresponding explanations in the description (which is present only in D1 and not in D1-PD) is provided in the Claims chart (Exhibit PPG-26), despite Mr Gottfried having been informed with respect to D1 “that its subject matter is relevant to the novelty of the claims of the Opposed Application on the basis that the same subject matter was also disclosed in its priority document” (Gottfried at [35], emphasis added).
In fact, the colour switch as defined in claim 1 appears to be disclosed only in D1 (not in D1-PD) with respect to Figure 16 which, together with the corresponding explanations, is missing from D1-PD. The other parts of D1 and D1-PD referred to by Mr Gottfried do not disclose these features. This fact was also implicitly acknowledged by the Opponent via the withdrawal of the ground of novelty altogether.
Similar approach to the interpretation of the optical effects disclosed in documents D2 and D3 (see Gottfried at [41-42], [43.1-43.2]; Exhibit PPG-27; Exhibit PPG-28) leads to the same conclusion, i.e. that “all of the features of claim 1 are disclosed in D2” (Gottfried at [42]) and “D3 discloses all of the features of claim 1” (Gottfried at [43.2]).
Mr Gottfried’s general comment with respect to the claimed invention is:
“In summation, I find no difference to the claimed invention from that of the prior art available before the Priority Date, as lenticular devices and lenticular images as claimed had been used for the security of documents and products before 2009.” (Gottfried at [33], emphasis added)
I must note that Mr Gottfried’s analysis of the claimed invention and the prior art creates an impression that he focusses mainly on the type of device and the type of optical effect at the expense of the particular features leading to the specific optical effect defined in claim 1. Therefore, in deciding the obviousness of the invention as defined in the claims, I find it difficult to give a high weight to his statements, in particular the above quoted and emphasised statements in Gottfried at [15-16], [33] as well as the statement below:
“The underlying purpose of the claimed intermediate region is to create a positive/negative or color switch effect, which is a lenticular effect that was common at and before the Priority Date of the Opposed Application.” (Gottfried at [20], emphasis added)
The evidence of Mr Moon
Mr Moon discusses four examples of lenticular devices:
“The devices in Exhibits JM-1, JM-2, JM-3, and JM-4 are examples of a lenticular device with an array of lenticular focusing lenses located over pairs of image strips. … One of each pair of image strips has portions defining a first image in a first colour and a second image in a second colour. The effect produced is that a first image can be seen at a first viewing angle, while a second image (of a different color than the first image) can be seen at a second viewing angle. As shown in these videos, as the viewing direction of the device changes (i.e. on tilting the device), a color switch is observed between the first and second images. (Moon-1 at [6], bold text in the original, underlining added)
One of the example devices is the MoMA magnet lenticular device (Exhibits JM-1 and part of JM-5) that I already mentioned before. Regarding this device and the MoMA mousepad (Exhibits JM-4 and part of JM-5 as reproduced below for reference), Mr Moon explains:
“…Referring to the video of the MoMA magnet (Exhibit JM-1), the first capital letter ‘M’ is shown in orange against black background at one view (at 0 seconds of the video), and is shown in black against an orange background at another view (at 4.0 seconds of the video). A similar effect can be seen from the video of the MoMA mousepad (Exhibit JM-4), in which the image of the word ‘MoMA’ in a mixture of red and white characters on a black background swaps to the image of the word ‘2000’ in a mixture of black and white characters on a red background depending on the viewing angle.” (Moon-1 at [8], emphasis in the original)
MoMA mousepad, part of Exhibit JM-5
As I have already discussed, the regions of the MoMA magnet lenticular device referred to by Mr Moon do not display the colour switch as defined in claim 1. I also do not consider that the MoMA mousepad (Exhibits JM-4 and part of JM-5), displays the colour switch as defined in claim 1 since the wording changes between “2000” and “MoMA” and the first and second images as defined appear impossible to identify.
Regarding the MoMA magnet lenticular device, the Expert for the Applicant, Dr Knight comments:
“For example, the video of D6/JM-1 and the corresponding still frames of JM-5 demonstrate that no part of the Magnet device behaves as claimed in the Opposed Application. Individual parts of the device change colour with viewing angle, but not with a direct inversion of appearance.” (Knight at [176], emphasis added)
I must disagree with Dr Knight. As I already mentioned, the MoMA magnet lenticular device does appear to demonstrate a colour switch as defined in claim 1. See for example the letter “o”, where the letter itself could be considered the first image and the background area enclosed by the letter could be considered the second image. At 4 seconds (see Exhibit JM-5), the letter is black and the enclosed area is orange, whereas at 5 seconds (again see Exhibit JM-5), the letter is orange and the enclosed area is black. From the video of the device (Exhibit JM-1), it appears that the letter “o” does not change its contours. It is interesting to observe that the existence of this localised colour switching effect is not mentioned by Mr Moon.
100. With respect to the Heidelberg Watch lenticular device (Exhibits JM-2 and part of JM-5 as reproduced below for reference), Dr Knight comments:
“The Heidelberg watch (D7) shows apparent movement of the hands. This does appear to require localised regions representing the hands that are initially white to become black, representing the watch face, and vice versa. However, there is not colour inversion of the overall content.” (Knight at [178])
Heidelberg Watch lenticular device, part of Exhibit JM-5
101. I consider that the Heidelberg Watch does not demonstrate a colour switch as defined in claim 1. Indeed the moving hands are distinguishable images, but the same does not apply to the regions of the watch face defined by the contours of the moving hands. To represent hand movement, these regions blend with the background when changing colour on tilting the device, hence the image of the hand does not just change colour but simply disappears.
102. Regarding the Twister (Geo Tile) lenticular device (Exhibits JM-3 and part of JM-5 as already reproduced), I already mentioned that this device does appear to demonstrate a colour switch as defined in claim 1, in particular the circles on the top and bottom rows of the second column from the left (e.g. at 4.0 and 5.5 seconds). In that respect, I agree with Mr Moon.
103. Regarding documents D1 and D1-PD (referred by Mr Moon as Exhibits JM-8 and JM-9, respectively), Mr Moon comments:
“A lenticular arrangement such as shown and described with reference to Figure 1 of Exhibits JM-8 and JM-9 was well known in the lenticular printing industry when US Application No. 61/157,309 was filed in March 2009. The visual effect of such an arrangement as illustrated by Figure 1 of Exhibits JM-8 and JM-9, is that the dots 26a of one image strip defining a first image would be visible from a first viewing angle 28a, and the dots 26b of the second image strip defining a second image would be visible from a second viewing angle 28b.
Exhibits JM-8 and JM-9 also disclose that the printed halftone dots can represent digital pixels of printed images (see page 14, lines 25-26 of Exhibit JM-8 and page 14, lines 3-4 of Exhibit JM-9). Thus one of the image strips of halftone dots in Figure 1, and also Figures 2, 11, 12 and 13 of Exhibits JM-8 and JM-9 can have portions defining a first image in a first colour, namely black, and portions defining a second image in a second colour, namely white, and the other of the image strips can have portions defining the first image in the second colour, namely white, and portions defining the second image in the second colour, namely black. The visual effect of such an arrangement is that, on tilting the device between the two viewing angles a colour switch is observed between the first and second images. Such a visual effect is exemplified in the Example described with reference to Figure 16 of Exhibit JM-8.” (Moon-1 at [13-14], bold text in the original, underlining added)
104. I cannot help but notice the high degree of similarity in the language used by Mr Moon and Mr Gottfried, including the same apparent mistake in the underlined expression “the second colour, namely black” which I presume should read “the first colour, namely black”.
105. In addition, I note Mr Moon’s comparison with all four of his examples of lenticular devices:
“The black and white colour switch described in Exhibits JM-8 and JM-9 is the same effect that is present in the MOMA Mouse Pad, Magnet and Postcard, Heidelberg Watch and Twister (Geo Tile) lenticular devices of Exhibits JM-1, JM-2, JM-3, and JM-4 except that in each of those devices, there was a colour switch between two different colours other than black and white” (Moon-1 at [15], bold text in the original, underlining added).
106. Based on the analysis of Mr Moon’s evidence in its entirety, I conclude that Mr Moon does not necessarily comment on the specific colour switching effect as defined in claim 1, but on the broader colour switching or changing achieved by a lenticular device. Therefore I cannot consider his evidence as pointing towards establishing the obviousness of claim 1.
The evidence of Dr Hardwick
107. Dr Hardwick prepared his first declaration (Hardwick-1) without the knowledge of the application under opposition – he was only provided with a redacted part describing the background of the invention (Exhibit BAH-2). He notes:
“At the Priority Date, these sorts of lenticular devices that display, at one angle, an image and, another angle, either a different image, or the same image in a different colour, or no image at all, such as those that are exemplified in the patent documents described in the Background, were becoming more and more prevalent.
In Australia, at and before the Priority Date, I was aware that not only Note Printing Australia, but also Securency International Ply Ltd (now lnnovia Security Ply Ltd) were involved in development of lenticular devices as a security feature.” (Hardwick-1 at [25.7-25.8])
108. With respect to D1 and D1-PD (referred by Dr Hardwick as Exhibits BAH-6 and BAH-7, respectively), Dr Hardwick comments:
“This document discloses a switching effect with a lens array with specific lens parameters and image elements. The image that is displayed by the device changes/switches as the viewing angle changes. For example, referring to Figure 1 of Exhibits BAH-6 and BAH-7, black and white image elements in the form of sets of dots 26a, 26b are located below lenslets 22 and depending on the angle at which the images are viewed, a first image from one set of the image dots 26a would be visible when the device is viewed at one angle 28a and a second image from the other of the sets of image dots 26b would be visible when the device is viewed at another angle 28b. Thereby, the device described in this document provides a two-colour switch effect between black and white images. I consider that colour switching images of the type disclosed in Exhibits BAH-6 and BAH-7, were well known in the field of lenticular devices before the Priority Date, and I also note that Figure 1 of Exhibits BAH-6 and BAH-7 is acknowledged as known prior art in each document.” (Hardwick-1 at [26.2], bold text in the original, underlining added)
109. With respect to the examples of lenticular devices referred to before in this decision as Exhibits JM-1 to JM-4 and Exhibit PPG-5 (and referred to by Dr Hardwick as Exhibits BAH-17 to BAH-21), Dr Hardwick states:
“Watermark presented me with four videos showing lenticular devices, which I understand to be a MoMA magnet lenticular device (D6, Exhibit BAH-17), a Heidelberg watch lenticular device (D7, Exhibit BAH-18), a Twister (Geo Tile) lenticular device (D8, Exhibit BAH-19), and a MoMA mousepad (D9, Exhibit BAH-20). Watermark additionally presented me with a document showing examples of Vari-Vue lenticular devices (Exhibit BAH-21). Each of these devices presents a color switch or image switch optical effect depending on the viewing angle of the device, of a type which I consider to be well known at the Priority Date.” (Hardwick-2 at [6], bold text in the original, underlining added)
110. Regarding the claimed invention, Dr Hardwick notes that:
“The invention of the Opposed Application relates to a lenticular device with a particular arrangement of image strips that display a color switch depending on the viewing angle, while claim 8 relates to a lenticular device that displays a opaque/transparent switch depending on the viewing angle. However, these effects were all well known effects at the Priority Date of the Opposed Application as illustrated in the devices shown in Exhibits BAH-17 to BAH-20 as well as the documents considered in my previous declaration.
…Therefore, in its broadest sense, the independent claims appear to simply describe a lenticular device that presents switch effects, either a color switch or an appearance switch, which I consider to be well known at the Priority Date.” (Hardwick-2 at [14-15], bold text in the original, underlining added)
111. From the above, it could be concluded that Dr Hardwick considers the features of the independent claims as part of the common general knowledge at the priority date. However, as already discussed, a large proportion of the lenticular devices (Exhibits JM-1 to JM-5, same as Exhibits BAH-17 to BAH-20) as well as all but one (i.e. D1-PD, Exhibit BAH-7) of the documents considered in Hardwick-1 do not display the same effect as defined in the claims. It is unclear to me how these can illustrate the defined effect, unless Dr Hardwick also refers to a broader, more general, colour switch or appearance switch effects and not to the specific effect as claimed. Dr Hardwick further comments that:
“…switch effects are also described in the Optical Document Security books by van Renesse (Exhibits BAH-14 and BAH-15 filed with my First Declaration). In particular, pages 209 to 210 of van Renesse's Optical Document Security 2nd ed (Exhibit BAH-14) describes:
The principle is illustrated in Figure 9.5. An array of lenses (e.g., of the cylindrical type) is embossed in visually transparent top layer I. Due to the focusing effect of the lenses, only small strips of the bottom layer II are visible while the exact location of these scrips depends on the viewing angle. … This way, a plastic card can be provided with a set of engraved tilt images comprising a photo of the bearer, a logo, expiration date, and so on. Otherwise, the separate images can be so designed that, on tilting the card, an apparent movement of certain image elements is observed (kinematic effect). Furthermore, two separate images or pairs thereof can form a stereographic pair so that the observer perceives a three-dimensional effect.” (Hardwick-2 at [16], bold and italic text in the original, underlining added)
112. I note that none of the above optical effects bears any substantial similarity with the effect claimed in any of the independent claims. Dr Hardwick continues:
“…I also refer to pages 304 to 305 of van Renesse's Optical Document Security Book 1st ed (Exhibit BAH-15).
These passages of the Optical Document Security Books disclose an arrangement where the device presents a different image depending on the angle at which the device is viewed by having an arrangement of strips in the bottom layer II with portions that are darkened by laser engraving and portions that are not darkened. These particular passages of the van Renesse books do not specifically refer to a color switch effect, in which first and second images present respective colors when viewed at one angle, and switch in color when viewed at another angle, as required by claim 1 of the Opposed Application. However, I consider that, from at least these passages of the van Renesse books, it would not at all be difficult to implement the color switch effect that is claimed by the Opposed Application. For example, the color switch effect can be provided by modifying the arrangement disclosed with reference to Figure 9.5 of van Renesse 2nd ed (Exhibit BAH-14) to have a lenticular device with strips a' and b' on the bottom layer II, where strips a' have darkened portions representing an image and strips b' have darkened portions that complement strips a' such that at one angle an image in dark is displayed against a light background as represented by image strips a', and at another angle the image is now light and displayed against a dark background.” (Hardwick-2 at [17-18], bold and italic text in the original, underlining added)
113. Here, while Dr Hardwick acknowledges the differences between the disclosure of the reference book and the claimed invention, he goes on to emphasise the lack of difficulty in implementing the claimed invention based on what was commonly known. I do not consider this analysis helpful in establishing obviousness.
114. Despite the quoted above and emphasised statements in Hardwick-2 at [14-15], I am not satisfied that the evidence of Dr Hardwick, in its entirety, establishes that the specific optical effect defined in the independent claims was obvious in light of the common general knowledge.
Inventive step summary
115. Having considered the Opponent’s submissions and the evidence on file, I am not satisfied that the invention defined in any one of the independent claims 1, 8, 30, and 36 does not involve an inventive step. Since claims 2-7, 9-29, 31-35, and 37-47 each incorporate the features of a corresponding independent claim, it follows that my conclusion applies to all of claims 1-47.
Conclusion and Costs
116. I have not established that the invention defined in any one of claims 1-47 does not involve an inventive step. In addition, I have not established that any one of claims 1-47 is not clear or not fairly based. No other grounds of opposition were included in the amended SGP and pressed by the Opponent. Therefore, the opposition is unsuccessful on all grounds.
117. It is a normal practice that costs should follow the event and the parties’ submissions generally reflected this practice. I have found the opposition unsuccessful on all grounds and I can see no reason to depart from the normal practice. I award costs according to Schedule 8 of the Regulations against the Opponent, Innovia Security Pty Ltd.
Dr V. Z. Kolev
Delegate of the Commissioner of Patents
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