Innovia Security Pty Ltd v De La Rue International Limited - [2016] APO 62

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Innovia Security Pty Ltd v De La Rue International Limited [2016] APO 62

Patent Application: 2009326170

Title:Security document

Patent Applicant:                   De La Rue International Limited
Opponent:  Innovia Security Pty Ltd
Delegate:  Xavier Gisz
Decision Date:  21 September 2016
Hearing Date:  29 June 2016

Catchwords: PATENTS - opposition to the grant of the patent under s 59 – opposed on the basis of novelty, inventive step, full description, fair basis, and succinctness – grounds of inventive step, full description, fair basis and succinctness not made out – claims 18 and 21 lack novelty in light of WO 2009/098435 – costs awarded against the applicant

Representation: Counsel for the applicant: Tom Cordiner
Patent attorney for the opponent: Watermark Patent and Trade Marks Attorneys

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2009326170

Title:Security document

Patent Applicant: De La Rue International Limited
Date of Decision: 21 September 2016
DECISION
The opposition is successful. Claims 18 and 21 lack novelty in light of WO 2009/098435.
I allow the applicant 60 days from the date of this decision in which to propose suitable amendments to overcome the above findings.
REASONS FOR DECISION
Background

Application 2009326170 in the name of De La Rue International Limited (the Applicant) is the Australian national phase entry of PCT/GB2009/002859 (publication number WO2010/067075) and has a priority date of 12 December 2008. A request for examination was filed on 27 March 2013. A notice of acceptance of the application was published on 25 September 2014. A notice of opposition was filed on 2 January 2015 by Innovia Security Pty Ltd (the Opponent) and a statement of Grounds and Particulars was filed by the Opponent on 2 April 2015.
Evidence in support was completed on 2 July 2015 (acknowledged on 6 July 2015). Evidence in answer was completed on 5 October 2015 (acknowledged on 6 October 2015). There was no Evidence in Reply. The Applicant proposed amendments on 5 October 2015. The amendments were advertised for opposition on 12 November 2015 and advertised as allowed on 4 February 2016.
The hearing was held in Canberra on 29 June 2016. The Applicant attended the hearing in person, while the Opponent opted to not attend the hearing and instead provided further written submissions.
Evidence
The Opponent’s evidence comprises a declaration by Bruce Alfred Hardwick together with Exhibits BAH-1 to BAH-21. The Applicant’s evidence comprises a declaration by Daniel John Reid together with Exhibits DJR-1 to DJR-4.
The Specification
The specification (as amended with proposed amendments of 5 October 2015) ends with 21 claims comprising two independent claim and 19 dependent claims. The independent claims are reproduced below:
1. A banknote which is one of a series of banknotes of different denominations, the banknote comprising a polymer substrate and having a substantially opaque region located centrally of the banknote and defining or carrying indicia relating to the banknote, and a substantially transparent peripheral region wherein the substantially opaque central region has a shape unique to the denomination of the banknote, wherein the optical density of the peripheral region when measured on a transmission densitometer, with an aperture area equivalent to that of a circle with a 1 mm diameter, is less than 0.3, preferably less than 0.2 and even more preferably less than 0.1.
18. A method of operating a banknote sorter to distinguish between banknotes of different denominations, wherein each banknote is one of a series of banknotes of different denominations each including at least one substantially transparent region, the shape and/or location of the transparent region being unique to the denomination of the banknote, the method comprising operating the banknote sorter to detect a transparent region in a banknote being processed, determine the shape and/or location of the detected transparent region, and use the detected shape and/or location to identify the denomination of the banknote.
Amendments were proposed by the Applicant on 22 June 2016. I sent a letter on 24 June 2016 stating:
“The proposal of amendments at this stage cannot be incorporated into the specification before the hearing. The consideration of the amendments will deferred until after the decision has been issued.
The default position is that the hearing will take place on 29 June 2016 on the basis of the specification as it existed when the date for hearing was set (i.e. the specification incorporating the amendments dated 5 October 2015). However, with the Opponent’s express consent the hearing can be on the basis of the proposed amendments.”
The Opponent stated in their final submissions of 28 June 2016:
“The Opponent does not wish to obstruct the expeditious resolution of the opposition, but cannot consent to the Hearing proceeding on the basis of the 22 June amendments.”
Consequently the consideration of the proposed amendments will be deferred until after the decision has issued.
The invention
This invention is a banknote with a transparent peripheral region. This is exemplified in figures 1a to 1d:
The purpose of the invention is described at page 2 lines 22 to 29:
“We have appreciated that with partially sighted users, it is possible to take advantage of the fact that they have some viewing capability by providing a substantially opaque secure banknote with a substantially transparent peripheral region. Such a banknote would offer excellent contrast between the transparent and opaque regions provided thereupon enabling partially-sighted users to perceive the distinctive shape of the opaque region silhouetted against the light background visible through the transparent periphery. Such partially sighted users will be able to perceive the edge of the banknote and thus identify the transparent region.
Furthermore, the use of a substantially transparent region prevents the generation of a "simple" counterfeit arising from the increasing popularity of colour photocopiers and other imaging systems and the improving technical quality of colour photocopies. In addition the clear transparent region provides a feature that is easily verifiable by the general public. The present invention thus provides a feature that is at once difficult to reproduce whilst also providing tactility and a high visual contrast for recognition by visually impaired users.”
Claim construction
While the rules of construction for an Australian patent specification are well summarized in Decor Corp v Dart Industries 13 IPR 385, the correct application of these rules to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70; 81 IPR 228 at [118] – [120]:
“the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear ... while the claims define the monopoly claimed in the words of the patentee's choosing, the specification should be read as a whole ... it is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification ... terms in the claim which are unclear may be defined or clarified by reference to the body of the specification.”
I also note that the requirement that the claims are clear is understood to be satisfied if a person could ascertain "whether or not what he proposes to do falls within the ambit of the claim" (Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59).
Peripheral and Central region
The claims define a transparent peripheral region and a central opaque region. The positional relationship between the transparent and opaque regions is defined by the claim – the opaque region is central to, and thus within, the peripheral region.
There are two possible interpretations of the words ‘central region’ in the context of this opposition. The word central could be interpreted narrowly such that it is the middle with respect of all edges, thus not touching any of the edges. Alternatively, the word central could be interpreted broadly to include both the narrow interpretation and also the case where it is in the middle of opposite edges but also touching the two other edges. These alternative interpretations are illustrated below:
The claims states:
“...a substantially transparent peripheral region...”
The singular article ‘a’ suggests that the substantially transparent peripheral region is a single region which tends to favour, and thus I am inclined to adopt, the first interpretation.
However, the description states at page 3 lines 18 to 22:
“In preferred constructions, the substantially transparent peripheral region extends fully around the periphery of the banknote. However, in some cases, the substantially transparent peripheral region may only extend substantially fully around the periphery of the banknote, in other words having some small breaks defined by opaque portions.”
This passage can be interpreted in two ways as illustrated below:
If the “small breaks defined by opaque portions” in the description are taken to be unconnected from the central opaque region (as shown in interpretation 1(a)), then this transparent peripheral region remains a single contiguous region, thus supporting the first interpretation. However, if the “small breaks defined by opaque portions” in the description are taken to be connected to the central opaque region (as shown in interpretation 1(b)), then the transparent peripheral region is no longer singular nor contiguous, thus supporting the second interpretation.
The phrase ‘opaque portions’ is a plural which suggests that they are unconnected with the central opaque portion. On the other hand, the words “the substantially transparent peripheral region may only extend substantially fully around the periphery” could be taken to mean that the peripheral region is broken into smaller regions. Because of the ambiguity in this part of the description, there is insufficient reason to depart from the meaning I have derived from the claims alone. Consequently, I consider that the central portion is surrounded by a single contiguous transparent peripheral region.
OPPOSITION UNDER SECTION 59
Onus of proof
The request for examination for this application was filed prior to 15 April 2013. As a consequence, substantive amendments of the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 do not apply to the present patent application. In other words, the consideration of grounds of opposition is under the Act as it existed prior to the Raising the Bar amendments. However, the notice of Opposition was filed after 15 April 2013, thus the opposition procedures that apply are those prescribed under the Regulations of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012.
The onus of proof in this opposition proceeding rests with the opponent, who must demonstrate that is clear that a valid patent cannot be granted (F.Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283; Commissioner of Patents v Sherman [2008] FCAFC 182; Genetics Institute Inc v Kirin-Amgen Inc [1999] FCA 742).
Grounds of Opposition
The patent was opposed on the grounds that the patent application lacks novelty, an inventive step, fair basis, full description, and succinctness.
Section 40
Sufficiency
The test for sufficiency of description is set out in the High Court decision in Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd (2001) HCA 8 at [25]:
"… will the disclosure enable the addressee of the specification to produce something within each claim without new inventions or additions of prolonged study of matters presenting initial difficulty?"
The Opponent states:
“The specification fails to satisfy sub-section 40(2) in that it does not describe the invention fully and/or does not describe the best method known to the applicant of performing the invention and/or end with a claim or claims defining the invention.
Pursuant to the above, the specification does not fully describe the invention of claims 18, 19 and 21. The method of claim 18 requires the detection of the shape and/or location of the transparent region. The description fails to provide any instruction as to how the shape and location of the transparent region is determined. Hence, the invention of claims 18, 19 and 21 has not been described in the specification.”
The Applicant states:
“The Opponent appears to complain that AU’170 fails to describe how the shape and location of the transparent region is determined by the banknote sorter. However, the Opponent fails to assert, as it must in order to satisfy this ground of opposition, that the person skilled in the art could not make something falling within the impugned claims without new inventions or prolonged study. Mr Reid says he could make the banknote sorter and there is no reply evidence to put that conclusion in doubt.”
Mr Reid states at paragraph 94:
“I consider that it would have been straightforward for a person skilled in the art to have implemented such a banknote sorter at the priority date by simply using an array of photo detectors such as those described in US 20030043365 (BAH-13), which was expressly referenced in the opposed application.”
I am satisfied that Mr Reid’s evidence establishes that there is a full description of the invention defined in claim 18.
Succinctness
It is generally accepted that claims will not be clear and succinct if their repetitious nature is such the difference in scope between two or more claims is not readily apparent (see for example Re The Upjohn Co (1994) 29 IPR 419 at 421).
The Applicant states:
“The Opponent argues that certain aspects of the claims are not succinct: OS at Section G, [143]-[147]. This arises from certain claims having graduated preferences and later claims limiting themselves to each preference. For example:
(a) The preferences in claim 1 regarding the optical density of the peripheral region
are the subject of claims 6 and 7;
(b) The preference in claim 4 that the peripheral region extends substantially fully
around the periphery of the banknote is the subject of claim 5; and
(c) The preferences in claim 8 regarding the optical density of the substantially
opaque region are the subject of claims 9 and 10.
However, on one view, claims which contain preferential language in them are simply as broad as the broadest aspect of the claim, ignoring the preference. Accordingly, later claims to the more limited preferences are not necessarily redundant. In any event, such internal redundancies do not make the claims unclear and do not overly complicate the claim set so as to make it lack succinctness so as to create an “overdose of claims” and is not “unnecessarily lengthy” or “repetitious” as the Opponent complains.
Nevertheless, while it is strictly unnecessary to do so for the reasons outlined above, the Applicant proposes simple amendments so as to remove the preferential language in claims 1, 4 and 8.”
The use of ‘preferential’ statements within claims does not affect the scope of the claims. While these statements are distracting, I do not consider them to affect the succinctness of the claims.
Fair basis
The tests accepted in LockwoodSecurity Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 69, 98-99 as being relevant to the consideration of fair basis are:
…whether there is a real and reasonably clear disclosure of the claimed invention in the specification [from Société Des Usines Chimiques Rhône-Poulenc v Commissioner of Patents (1958) 100 CLR 5 and cited with approval in Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79] or
…whether the claims travel beyond the subject matter of the invention described in the specification [Olin v Super Cartridge (1977) 180 CLR 236].
Claim 12
The Opponent states:
“Claim 12 further characterises the substantially transparent peripheral region of the banknote to have one or more security features e.g. indicia such as microtext, fine line filigree patterns, metallised or demetallised indicia, embossings or semitransparent or transparent optically variable devices such as liquid crystal films or coatings, photonic crystal films or coatings, and iridescent coatings.
The description at page 4, lines 1-7 describe the application of additional indicia such as microtext, fine lined filigree patterns, metallised or demetallised indicia, embossings and other similar indicia to the transparent area of the banknote.
However, lines 3 and 4 specify that the additional indicia may only be applied ‘provided that there is no significant reduction in the optical contrast between the transparent and opaque regions’.”
The Applicant states:
“In its fair basis attack on claim 12, the Opponent seeks to import into the claim what it considers to be an “essential integer” or “essential feature” of the alleged invention, contrary to the High Court’s remonstration in Lockwood. In any event, the limitation at page 4 line 3-4 is not necessary, given that claim 1 requires the central region to be “substantially opaque” and the peripheral region to be “substantially transparent” so that there will be the necessary optical contrast between the two regions. This contrast is further refined in claim 11, but plainly exists in the broader claim 1.”
I agree with the Applicant that there is no inconsistency between the description and claim 12.
Claim 18
The Opponent states:
“Claims 18, 19 and 21 also lack fair basis on the matter described in the specification. Claims 18, 19 and 21 lack supporting description in the specification. Claim 18 defines a method of operating a banknote sorter, including the step of determining the shape and/or location of a substantially transparent region in the banknote.”
The Applicant states:
“In its fair basis attack on claims 18, 19 and 21, the Opponent falls into error. There is real and reasonably clear disclosure of the invention in claims 18, 19 and 21 at page 4 line 18 to page 5 line 5 of the specification, and nothing else in the specification teaches away or limits that general disclosure. A lack of fair basis does not arise simply because no detailed description of the claimed invention is given.
In any event, the banknotes are described clearly in the specification, and the figures plainly show how the shape and location of transparent regions on the banknotes may be changed according to denomination (see figure 2) which could be used by a banknote sorter to identify different denominations.”
I agree with the applicant that there is no inconsistency between the description and claim 18.
Novelty
A claimed invention is deprived of novelty if it has been given to the public before the priority date, either by prior use of a product or process, or by publication of information that equates to the claimed invention (Justice Bennett in Danisco A/S v Novozymes A/S (No 2) [2011] FCA 282 at [248]). It is well established that the general test for anticipation is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20]:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement.”
This test is satisfied if the alleged anticipation discloses all of the essential features of the invention as claimed (Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40 at [19]). To meet this requirement, the prior art must contain “clear and unmistakable directions” to the claimed invention (Pfizer Overseas Pharmaceuticals v Eli Lilly and Co [2005] FCAFC 224 at [314]). However, if the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee’s claim, but would be at least as likely to be carried out in such a way that would not do so, the patentee’s claim will not be anticipated (General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd (1971) 1A IPR 121 at 138). Where a prior publication does not explicitly disclose all of the integers of the claimed invention, it would still deprive the claimed invention of novelty if (i) the skilled reader understands the disclosures of the prior publication to include a missing integer, and (ii) if the document contains a direction to use a process that inevitably or inexorably results in something within the claim (Justice Bennett in Danisco (No 2) [2011] FCA 282 at [248]).
Whole of contents

Documents that are published before the priority date are part of the prior art base as defined in part (a) of the definition of “prior art base” in Schedule 1 of the Act.
Documents that are published after the priority date may form part of the prior art base as defined in part (b)(ii) if the three additional conditions are met. These are known as “whole of contents” prior art documents.
The definition of “prior art base” given in Schedule 1 of the Act is reproduced below:
"prior art base" means:
(a) in relation to deciding whether an invention does or does not involve an inventive step or an innovative step:
(i) information in a document that is publicly available, whether in or out of the patent area; and
(ii) information made publicly available through doing an act, whether in or out of the patent area.
(b) in relation to deciding whether an invention is or is not novel:
(i) information of a kind mentioned in paragraph (a); and
(ii) information contained in a published specification filed in respect of a complete application where:
(A) if the information is, or were to be, the subject of a claim of the specification, the claim has, or would have, a priority date earlier than that of the claim under consideration; and
(B) the specification was published on or after the priority date of the claim under consideration; and
(C) the information was contained in the specification on its filing date.
Australian $5, $10, $20, $50 and $100 polymer banknotes in circulation prior to 12 December 2008 (Exhibit BAH-6)
The Opponent states in their submissions:
“The skilled addressee has interpreted ‘peripheral region’ as a region at the periphery of the banknote, but the region does not need to encompass the edge of the banknote in order to be ‘peripheral’. This construction of ‘peripheral region’ is enforced on claim 1 by the use of the term ‘edge of the banknote’ in dependent claim 3. The transparent windows in the Australian polymer banknotes are transparent windows positioned in a ‘peripheral region’35. As the shape of the clear window is necessarily complementary to the shape of the opaque area of the banknote, the shape of the opaque region for each of the Australian notes is unique to its denomination.”
I have construed the words ‘peripheral region’ to include only a region that extends to the edge of the banknote. This feature is not disclosed in the Australian bank notes and therefore claim 1 and claims dependent thereon are novel.
D1: WO 2009/062229 A1 (Securency International Pty Ltd)
Can D1 be treated as a “whole of contents” document?
D1 was published on 22 May 2009 which is after the priority date of 12 December 2008. However, D1 has a priority date of 5 November 2008. Thus can only be treated as a “whole of contents” document.
D1 is a PCT application. A PCT application which has designated Australia is treated as an Australian patent application under the Act. D1 has a priority document AU2007906224. I have reviewed the priority document and am satisfied that information contained in document D1 relevant to the present consideration of novelty is entitled to the priority dates claimed. Consequently, document D1 satisfies condition (A).
D1 was published on 22 May 2009 which is after the priority date (12 December 2008) of the presently opposed application. Consequently, D1 satisfies condition (B).
D1 is unamended and thus it follows that the information contained in the specification was the same information at the filing date. Consequently, D1 satisfies condition (C).
As D1 meets the conditions for A, B and C, it can be treated as a “whole of contents” document.
Does D1 anticipate Claim 1?
D1 discloses a bank note with transparent regions. The invention in D1 is illustrated in Figure 2, reproduced below:
Optical density of peripheral region less than 0.3
52. The Applicant states:
“... there is no teaching of the specific optical density range of claim 1 in D1. It certainly is not inherent that the feature is present in D1. At best, it is equally possible that a person skilled in the art might make the transparent windows of the correct optical density, as not. Even that would not be sufficient for anticipation.”
Dr Hardwick states at paragraph 35:
“I understand that an optical density of 0 corresponds to completely transparent and an optical density greater than 1 corresponds to “opaque”. Sometimes opacity is measured with opacity meters which give a reading between 0 and 100 ‘opacity units’. In fact, strictly speaking there are no units for opacity. I have seen measurements taken on the Macbeth TD 932 for aluminised film which gave readings in excess of 3.0. While the polymers used in transparent banknote windows will never be completely transparent and therefore never have an optical density of exactly 0, they are for all practical purposes regarded as transparent and would have optical densities less than 0.1. The results on page 4 of the Innovia Films report (Exhibit BAH-5) show the clear windows had an optical density reading of 0.03. Therefore, the optical density threshold for the transparent peripheral region provided in claim 1 would include any clear window that would normally be referred to as transparent. In fact, optical densities toward the 0.3 maximum would be considered translucent. Opacity and transparency are two ends of a continuous spectrum and specifying what qualifies as ‘transparent’ or ‘substantially transparent’ is somewhat arbitrary, and will ultimately just depend on the desired optical effect.”
Dr Hardwick states at paragraph 75:
“D1 does not define any specific values or the optical density of the transparent windows or the particular optical densitometer that should take the measurements. However, as discussed above in the interpretation section, a transparent polymeric window would be inherently understood as one that had an optical density of less than 0.3 (approximately 10x the optical density of Australian banknote windows measured in Exhibit BAH-5). In fact, an optical density of 0.3 would be regarded as a translucent half window.”
Mr Reid states in response at paragraph 78:
“Also, there is no disclosure of optical densities of the transparent or opaque regions.”
I accept Mr Reid’s statement that the optical densities are not explicitly disclosed in D1, but I also accept Dr Hardwick’s assessment that the transparent windows in D1 would necessarily have an optical density of less than 0.3. Thus the feature of an optical density of less than 0.3 is inherent in D1. Consequently this feature is disclosed in D1.
Substantially transparent peripheral region and substantially opaque central region
The description states:
“As shown in Figures 2 to 4, the windows 40 and 50 are edge windows extending completely along the shorter side edges 23, 24 of the banknote.”
I have construed the opaque central region to mean a region bounded by a single contiguous transparent region. D1 discloses multiple substantially transparent peripheral regions, but does not disclose a central opaque region and a substantially transparent peripheral region. Consequently the feature of a substantially opaque central region is not disclosed in D1.
Opaque region unique to the denomination
The description states at page 13 line 33 to page 14 line 4:
“The shape of the shorter side edge windows 40, 50 and/or the embossings 42, 52 may vary for different denominations of banknotes in a currency series so that the shorter side edge windows 40, 50 themselves and/or the embossings 44, 39 may serve as denominators for the visually impaired.”
This is a disclosure of different shapes of the edge windows corresponding to different denominations, and thus the remaining opaque region also necessarily corresponds to different denominations. However, as I have found that D1 does not disclose a central opaque region as defined in the claims an opaque region unique to the denomination is not disclosed.
D2: WO 2009/075015 A1 (Exhibit BAH-10)
The Opponent states:
“D2 is a Japanese originating PCT Patent Application for a banknote processing machine filed 10 December 2007 designating Australia. D2 was subsequently published 18 June 2009 and therefore relevant to the 170 Application on the basis of whole of contents novelty. The counterpart US national phase application D2–EN is published as US 2010/0303332 A1, being the verified English translation of D2. The USPTO transmittal letter (Exhibit BAH-12) establishes at item 6 that D2–EN is an English translation of D2 as filed on 10 December 2007.”
I accept that the content of US 2010/0303332 is essentially the same as WO 2009/075015 and have written the decision accordingly.
Can D2 be treated as a “whole of contents” document?
D2 was published on 18 June 2009 which is after the priority date of 12 December 2008. However, D1 has a priority date of 10 December 2007. Thus can only be treated as a “whole of contents” document.
D2 is a PCT application. A PCT application which has designated Australia is treated as an Australian patent application under the Act. Consequently, document D1 satisfies condition (A).
D2 was published on 18 June 2009 which is after the priority date (12 December 2008) of the presently opposed application. Consequently, D1 satisfies condition (B).
D2 is unamended and thus it follows that the information contained in the specification was the same information at the filing date. Consequently, D1 satisfies condition (C).
As D2 meets the conditions for A, B and C, it can be treated as a “whole of contents” document.
Does D2 anticipate Claim 18?
The Opponent states:
“D2–EN describes a banknote handling machine for identifying the denomination of a banknote (see [0008]), the example described with reference to Figures 5A, 5B, 6B, 6C, 7A and 7B refer to a series of Singaporean dollars of different denomination, each with a corner window of different size and position (see [0102] to [0104]).”
D2 states at paragraph 9:
“A banknote handling machine of claim 2, which is a banknote handling machine of claim 1, further includes a window detection sensor constituted of two or more predetemined number of transmissive photosensors arranged in the width direction of the banknote that is perpendicular to the transport direction along the transport path of the banknote. The window identification means judge whether or not the banknote is a windowed banknote through the window detection sensor.”
This passage discloses a window identification means, but does not correlate the identification of window with the denomination of the banknote.
The closest disclosure of D2 to disclosing a banknote denomination sorting mechanism based on the window shape or location is provided at paragraph 14 of the D2 which states:
“A banknote handling machine of claim 7, which is a banknote handling machine of claim 6, further includes denomination recognition means which is disposed in the transport path and recognize a denomination of the received banknote, and window size memory means which stores in advance maximum window size information in the transport direction along the transport path in association with denomination information, in which the stop period setting means read from the window size memory means the maximum window size in the transport direction along the transport path of the denomination recognized by the denomination recognition means in the identification at the position corresponding to the transport path sensor that the banknote passes after the denomination is recognized by the denomination recognition means in the case where the denomination recognition means judged that a denomination of the banknote is one of denominations of a windowed banknote, and set an identification stop period corresponding to the read window size for the front/rear end identification means.”
The purpose of detecting the window is not to determine the denomination, but rather to determine if the banknote is in the correct position. There is no clear and unmistakable disclosure that D2 utilises the window as a means of determining the denomination. Consequently claim 18 is novel in light of D2.
D3: WO 2009/098435 A2 (Exhibit BAH-14)
Can D3 be treated as a “whole of contents” document?
D3 was published on 13 August 2009 which is after the priority date of 12 December 2008. However, D1 has a priority date of 8 February 2008. Thus can only be treated as a “whole of contents” document.
D3 is a PCT application. A PCT application which has designated Australia is treated as an Australian patent application under the Act. D1 has a priority document GB 0802421.8 (exhibit BAH-15). I have reviewed the priority document and am satisfied that information contained in document D3 relevant to the present consideration of novelty is entitled to the priority dates claimed. Consequently, document D3 satisfies condition (A).
D3 was published on 13 August 2009 which is after the priority date (12 December 2008) of the presently opposed application. Consequently, D1 satisfies condition (B).
D3 is unamended and thus it follows that the information contained in the specification was the same information at the filing date. Consequently, D3 satisfies condition (C).
As D3 meets the conditions for A, B and C, it can be treated as a “whole of contents” document.
Does D3 anticipate Claim 1?
D3 discloses a transparent strip or strips extending between edges of the banknote. One embodiment of D3 is reproduced below:
D3 does not disclose an opaque central portion and transparent peripheral region as I have construed these terms. Consequently claim 1 is novel in light of D3.
Does D3 anticipate Claim 18?
Dr Hardwick states at paragraph 113:
“D3 describes using the ‘variable’ (variations in the shape and/or location of transparent regions to advantage in a machine reader (see page 6, lines 32 to 34). Then at page 7, line 33 to page 8, line 16, D3 discusses a system of detecting and differentiating between banknotes of differing denominations. At page 8, lines 1 to 3, the detector is defined as sensing the duration of the ‘flash’ of light transmitted through the transparent region in order to determine the determine the width in the sheet fitted direction. This is used to determine the location and size of the window in the banknote, thereby denominating the note.”
Mr Reid states at paragraph 107:
“In paragraph 113 and in relation to claims 18 and 19, Mr Hardwick states that D3 describes using "variations in the shape and/or location of transparent regions to advantage in a machine reader." However, this is incorrect. D3 describes only using the number and duration of flashes (i.e., the number of transparent stripes and their respective widths) to determine denomination and discriminate between the leading edge of the banknote and transparent stripes. However, the number of stripes is independent of their location in a banknote, and the stripes are always rectangular in shape.”
D3 states at page 7 lines 20 to 32:
“Figure 8 illustrates an example where the security document comprises multiple transparent strips 40-42 which can be used to form a code. The strips 40-42 are shown as dark lines for ease of understanding the drawing. In this case, the code is formed firstly by the fact that there are three strips 40-42 and secondly because the distance between adjacent strips 40;41 and 41;42 is different. Figure 9 illustrates a further example where multiple strips 43-45 are provided of different widths (as well as with different spacings) and again illustrated as dark lines. A series of banknotes can comprise different numbers of strips to indicate denomination. As the document in Figure 8 is passed by the transmitted light detector 34 the number of ''flashes" of transmitted light which are of full note width will determine its denomination. In the example in Figure 9 both the number of ''flashes" and the duration of each ''flash" will determine the denomination. Of course, other variations are possible such as varying widths and same spacing.”
I consider this to be a disclosure of essentially a barcode formed by the transparent strips. The duration of the flashes is a measure of the width of the transparent strips. The strips are rectangular, thus measuring the width of the rectangle is sufficient to infer the dimensions of the rectangle.
Another embodiment in D3 discloses determining the denomination on the basis of a single transparent region rather than multiple transparent regions. D3 states at page 5 line 28 to page 6 line 2:
“Thus, when the document 38 passes along the path 32 short edge first, a "flash" of transmitted light will be detected by the sensor 34 equivalent to the width of the transparent strip 3. The length of time the ''flash" of transmitted light is detected for will correspond to the width of the continuous transparent region 3. The width of the transparent strip 3 can be varied between families of secure documents to provide a method of coding. A more complex coding system can be introduced into the document by providing multiple continuous transparent strips which can either be of the same width or different widths (as described below).”
I consider that the words “width of the transparent strip can be varied between families of secure documents” inherently include the denomination of the banknotes.
This description corresponds with Figure 1, reproduced below:
I consider rectangles of different dimensions to be different shapes. Consequently I consider both of the above embodiments of D3 to be disclosure of:
“at least one substantially transparent region, the shape and/or location of the transparent region being unique to the denomination of the banknote”
Claim 18 is thus not novel in light of D3.
Claim 19 combines the features of claim 1 with claim 18. I have found the features of claim 1 to be novel in light of D3, and thus claim 19 is also novel in light of D3.
Claim 20 is an omnibus claim based on the invention defined in claim 1 and so is considered novel.
Claim 21 is an omnibus claim based on the invention defined in claim 18. The description of the invention defined by claim 18 is brief and has no accompanying drawings. Consequently claim 21 is considered to have essentially the same scope as claim 18 and thus lacks novelty.
Inventive step
The test for obviousness is whether it would have been a matter of routine to proceed to the claimed invention. In Wellcome Foundation Ltd v V.R. Laboratories (Aust.) Pty Ltd [1981] HCA 12 Justice Aickin stated:
“The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.”
Person skilled in the art
Each of Dr Hardwick and Mr Reid have extensive experience in security documents and all can provide useful insight in the knowledge and expected activity of a person skilled in the art.
Problem
The Applicant states:
“To the extent that this a “problem to be solved” case, the invention provides a series of banknotes which a visually impaired person can distinguish as to denomination by visual rather than tactile means, and a banknote sorting machine which can distinguish between denominations.”
I am satisfied with this summary of the problem to be solved.
Ascertained, understood and regarded as relevant
Australian banknotes with windows have been in currency since 1992. There is no doubt that Australian banknotes meet the requirements of ascertained, understood and regarded as relevant.
Obviousness
The Opponent states:
“In the event it is held that every element of claim 1 is not encompassed by the Common General Knowledge, it is clear these elements are disclosed in documents that the skilled addressee could reasonably have been expected to have ascertained, understood and regarded as relevant. In particular, the skilled worker, fully aware of Australian polymer banknote circulating prior to 12 December 2008, and appraised one or more of D4 to D11 would derive the banknotes of claim 1 without any exercise of ingenuity. None of the elements in claim 1 are combined in a manner which would be considered problematic, unconventional or contrary to standard practice in this field.”

I have found that the window found in Australian banknotes before the priority date do not fall within the scope of claim 1.
I can see no motivation for a person skilled in the art to modify the Australian banknote such the internal window was essentially inverted such that it became an external peripheral window. Consequently claim 1 is considered inventive in light of the common general knowledge.
Conclusion

100. The opposition is successful. Claims 18 and 21 lack novelty in light of WO 2009/098435. I allow the applicant 60 days from the date of this decision in which to propose suitable amendments to overcome the above findings.
Costs
101. The Opponent has successfully opposed the grant of the patent. Costs are awarded in accordance with Schedule 8 against the Applicant, De La Rue International Limited.
Xavier Gisz
Delegate of the Commissioner of Patents