Innovia Security Pty Ltd v De La Rue International Limited - [2016] APO 57

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Innovia Security Pty Ltd v De La Rue International Limited [2016] APO 57

Patent Application: 2010311176

Title:Improvements in security devices

Patent Applicant:                   De La Rue International Limited
Opponent:  Innovia Security Pty Ltd
Delegate:  Xavier Gisz
Decision Date:  31 August 2016
Hearing Date:  Written submissions filed on 21 July 2016

Catchwords: PATENTS - Final determination of an opposition under section 59 – the amendments do not overcome the findings in the earlier decision – application is refused.

Representation: Patent attorney for the opponent: Watermark

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2010311176

Title:Improvements in security devices

Patent Applicant: De La Rue International Limited
Date of Decision: 31 August 2016
DECISION
The amendments to the specification do not overcome the deficiencies identified in the earlier decision. Subject to an appeal of this decision, I direct the application be refused.
Costs are awarded according to Schedule 8 against the Applicant, De La Rue International Limited.
REASONS FOR DECISION
Background

Grant of a patent for application 2010311176 in the name of De La Rue International Limited (the Applicant) was opposed by Innovia Security Pty Ltd (the Opponent). Following a hearing on 19 August 2015 I issued a decision upholding the opposition, which was reported as Innovia Security Pty Ltd v De La Rue International Limited [2015] APO 77 (the earlier decision) dated 24 November 2015. I found that all claims of the Application lacked inventive step in view of D1 (WO 2008/043981). In response to the Decision, on 11 January 2016 the Applicant lodged a Request to Amend under Section 104. The amendments were allowed and published on 28 April 2016.
On 4 May 2016 the parties were asked is they wished to be heard on the final determination of the matter. On 18 May 2016 the Opponent advised that it wished to be heard on the matter and on 9 June 2016 the Opponent further advised they wished for the hearing to be on the basis of written submissions. On 23 June 2016 the parties were advised that written submissions were due on 21 July 2016 and responding submissions were due on 28 July 2016. The Opponent filed submissions on 21 July 2016 while the Applicant did not provide any submissions.
The Law
At the final determination hearing, it was not in dispute that the decision of the High Court in R v Smith (Commissioner of Patents); Ex parte Mole Engineering Pty Ltd [1981] HCA 25; (1981) 147 CLR 340 (Ex parte Mole) supports the Commissioner deciding an opposition with more than one decision, providing that each decision is final and decides all the issues arising on the notice of opposition so far as they were capable of determination at the time. The issues to be considered in the final determination are whether the amendments to the specification overcome the deficiencies identified in the earlier decision and whether the amendments introduce any new deficiencies.
Earlier decision
In the earlier decision I found:
“Claims 1-28 lack an inventive step in light of D1 (WO 2008/043981) whether dependent claims are appended to either claim 1 or claim 2.”
The amendments
The amendments are as follows:
1. A security device comprising a first colourshifting layer, a second colourshifting layer which exhibits different reflective characteristics to the first colourshifting layer, said colourshifting layers exhibiting a visible colour at normal incidence, a partial first light absorbing layer between first surfaces of the first and second colourshifting layers such that a first region is formed where there is no first absorbing layer between the first and second colourshifting layers and a second region is formed where the first light absorbing layer lies between the first and second colourshifting layers, and a second light absorbing layer applied to a second surface of the second colourshifting layer, wherein the colour of the partial first absorbing layer is selected to substantially match the colour of light reflected at a normal angle of incidence by the combination of the second colourshifting layer and the second absorbing layer and when the security device is viewed at an angle which is away from the normal angle of incidence each region is of a corresponding colour that is different to that observed at normal incidence for the respective region.
2. A security device comprising a first colourshifting layer, a second colourshifting layer which exhibits different reflective characteristics to the first colourshifting layer, said second colourshifting layer being a multilayer polymer, a partial first light absorbing layer between first surf aces of the first and second colourshifting layers such that a first region is formed where there is no first absorbing layer between the first and second colourshifting layers and a second region is formed where the first light absorbing layer lies between the first and second colourshifting layers, light absorbing layer applied to a second surface of the second colourshifting layer, wherein the colour of the partial first absorbing layer is selected to substantially match the colour of light reflected at a normal angle of incidence by the combination of the second colourshifting layer and the second absorbing layer and when the security device is viewed at an angle which is away from the normal angle of incidence each region is of a corresponding colour that is different to that observed at normal incidence for the respective region.
First Phrase
The first phrase added by amendment is as follows:
“such that a first region is formed where there is no first absorbing layer between the first and second colourshifting layers and a second region is formed where the first light absorbing layer lies between the first and second colourshifting layers”
The Opponent states:
“In regard to the first phrase referred to in paragraph 5 above, the language merely adds the explicit statement that the partiality of the first light absorbing layer defines two different regions. It does not alter claim scope, as this feature is inherent in the device as claimed in claims 1 and 2 prior to amendment. Accordingly it cannot contribute to inventive step. Additionally, D1 clearly discloses in Figure 5, a device having this feature. The opponent notes the Delegate's comments at [35] of the Decision that D1 discloses all features of claim 1 except (g) - matching the colour of the first partial absorbing layer with the combination of second colour shifting layer and the second light absorbing layer. The first phrase of the amendments changes nothing in this regard. We further note the Delegate found at [80] of the Decision the colour matching feature to be obvious in view of D1.”
The first phrase added by the amendments clarifies how the first light absorbing layer is partial in that it creates separate regions with different colourshifting characteristics. This is how the claims were construed in the earlier decision, thus making explicit what was previously implicit.
The amendment does not overcome the inventive step problem since it merely aligns the claims with my construction of the word ‘partial’ in the earlier decision. In other words, a partial first light absorbing layer, as defined by the amendments, was found in the earlier decision to be disclosed in D1 (for example in figure 5). Consequently, the addition of the first phrase does not overcome the lack of inventive step identified in the earlier decision.
Second Phrase
The second phrase added by amendment is as follows:
“and when the security device is viewed at an angle which is away from the normal angle of incidence each region is of a corresponding colour that is different to that observed at normal incidence for the respective region.”
The Opponent states:
“Regarding the second phrase referred to in paragraph 5 above, the language merely adds the optical result that is achieved by the device. Again, this is an inherent feature of the device and cannot contribute to inventive step. This result was recognized by the Delegate in the Decision at paragraphs [19] to [23].”
The claim (prior to amendment) defines that the colours match when viewed at a normal angle. The second phrase added by amendments provides the inverse of this feature, i.e. that the colours do not match when viewed at a non-normal angle.
I consider that the second phrase is implicit to the claimed invention and it was treated as such in the earlier decision. The second phrase merely clarifies the feature of the claims that was already found absent from, but obvious in light of, the prior art document D1. Consequently the addition of the second phrase does not serve to overcome the identified lack of inventive step.
Inventive step
In the earlier decision I stated:
“It is unclear as to whether any amendments could be made to provide the claims with an inventive step, however I am not certain that there is no patentable subject matter that could validly be claimed. Accordingly I allow the applicant an opportunity to propose suitable amendments to overcome the above findings within 2 months of the date of this decision.”
The amendments do not appear to be a genuine attempt at overcoming the lack of inventive step and consequently I see no reason to give the Applicant further opportunity to overcome the lack of inventive step. Consequently I will refuse the application.
Costs
It is normal in actions before the Commissioner that costs should follow the event. The Opponent has been successful in the final determination and I see no reason to vary the normal practice. I award costs according to Schedule 8 against the Applicant, De La Rue International Limited.
Conclusion
The amendments to the specification do not overcome the deficiencies identified in the earlier decision. Subject to an appeal of this decision, I direct the application be refused.
Xavier Gisz
Delegate of the Commissioner of Patents