Innovia Security Pty Ltd v De La Rue International Limited
[2016] APO 42
•4 July 2016
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Innovia Security Pty Ltd v De La Rue International Limited [2016] APO 42
Patent Application: 2009219972
Title:Security Document Comprising a Security Feature Having a Layer With Particles
Patent Applicant: De La Rue International Limited
Opponent: Innovia Security Pty Ltd
Delegate: M. G. Kraefft
Decision Date: 4 July 2016
Hearing Date: 28 April 2016, in Melbourne
Catchwords: PATENTS – section 59 – opposition to grant of a patent – whether claimed invention is novel – whether claimed invention has inventive step – whether invention a manner of manufacture – whether invention described fully – whether claims fairly based and clear – opposition failed on all grounds.
Representation: Patent applicant: Mr Tom Cordiner, of counsel, instructed by patent attorneys, Davies Collison Cave.
Opponent:Mr J Roger Green and Mr Nigel Eugene Pereira, patent attorneys, Watermark.
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2009219972
Title:Security Document Comprising a Security Feature Having a Layer With Particles
Patent Applicant: De La Rue International Limited
Date of Decision: 4 July 2016
DECISION
The opposition fails on all grounds raised in this opposition
Subject to appeal, I direct the application proceed to grant.
Costs in accordance with Schedule 8 awarded against the opponent, Innovia Security Pty Ltd.
REASONS FOR DECISION
BACKGROUND
De La Rue International Limited (“the applicant”) filed patent application 2009219972 on 20 February 2009. The application claims an earliest priority date of 29 February 2008 from a GB basic application. Application 2009219972 was advertised accepted on 7 August 2014.
Innovia Security Pty Ltd (“the opponent”) filed a notice of opposition on 7 November 2014. A statement of grounds and particulars followed on 9 February 2015.
The parties completed the evidentiary stages on 6 November 2015.
SPECIFICATION
The specification describes the alleged invention as relating to a security document and more specifically to printed security features for banknotes and other security documents. The specification mentions long interest in making various documents or banknotes within a series recognisable from each other by the visually impaired. Existing techniques were variable sized or coloured currency, large numerals, various arrangements of tactile markings and special patterned shapes for different denominations.
The specification acknowledges, in the prior art, the employment of tactile printed markings generated by intaglio printing. It states that, in conventional intaglio ink, the pigment particle size distribution is narrow with a typical maximum particle size of 5 microns. The tactility generated by the intaglio printing process is a result of the depth of the engraving of the intaglio plate and the manner in which the depth and shape of the engravings vary across a particular image. However, beyond a change in surface profile, detectable by touch, from the normal plane of the substrate, there is no further change in tactility detected by simply moving a finger across the raised area due to the smooth surface of the intaglio ink. The specification then states that, to get a distinct tactile feel from an intaglio printed pattern, the whole design must be typically raised at least 30 microns above the surface of the substrate.
The challenge then with using intaglio printing for recognition by the blind is to generate significant additional or different tactility to the conventional intaglio print already on the document. Furthermore, conventional intaglio inks do not have the very high wear and abrasion resistance required for blind recognition features that will be regularly handled and rubbed in circulation. Additionally, different tactility cannot be recognised along the line of printing. It can only be determined across the line of printing.
The specification ends with 21 claims. Aside from the omnibus claim at the end, claim 1 is the only independent claim. This claim reads as follows.
- A security document comprising a printed security feature having a tactile feel, said security feature comprising a printed layer with particles protruding at least 10 µm therefrom in an amount of at least 3 particles per mm2 of said layer wherein the heights of the particles protruding from the surface of the printed layer vary, such that the printed layer has a textured surface.
STATEMENT OF GROUNDS AND PARTICULARS
The opponent listed five grounds of opposition. The grounds included that the claimed invention was not novel and lacked an inventive step, and was not a manner of manufacture. In respect to the complete specification, the opponent stated that the complete specification did not fully describe the invention or end with claims defining the invention, and that the claims were not clear, succinct or fairly based on the matter described in the specification. The opponent provided numerous particulars to support these grounds of opposition.
EVIDENCE IN SUPPORT
The opponent filed evidence in support in the form of four declarations from Dr Bruce Alfred Hardwick. Dr Hardwick is a chemical engineer and joined Note Printing Works (“NPW”), a division of the Reserve Bank of Australia, in 1983. He had worked for NPW and its successor, Note Printing Australia Limited (“NPAL”), until his retirement from the company in November 2005. As technical development manager, Dr Hardwick led the research and development team responsible for taking the polymer banknote into production. He also worked in various technical working groups or committees involved in research and development (“R&D”) related to banknote security. Furthermore Dr Hardwick is named as an inventor on a number of patents in that field. He has also presented papers at international conferences and given lectures on similar topics.
Mr Hardwick’s declarations sequentially cover ground such as the documentary resources he and others in the field of security documents would have consulted at the priority date, conference attendances, the background knowledge of the art, the expectation of ascertainment and understanding of specific documents related to the field, and commentary of the relevance of selected documents against the claimed invention.
EVIDENCE IN ANSWER
The applicant filed evidence in answer from Mr Richard Bryan Jotcham. Mr Jotcham began his professional career as a chemist and materials scientist. He became involved in R&D of new security document technologies for a major banknote paper producer in 1988. By 1999, when he left the company, Mr Jotcham had established a substantial patent portfolio on security document technologies. In the same year, Mr Jotcham founded his own company that provided independent consulting advice, predominantly technical and commercialisation advice, relating to security technologies, including those suited for use with banknotes.
In evidence, Mr Jotcham described conferences, trade shows, his company’s physical library, and patent documents and other publications as sources of information related to security technologies that he would have consulted at the relevant time. He further discussed several security features he would have considered at the priority date for security documents for the visually impaired and generally agreed that improvements in tactility were considered desirable at the priority date for the visually impaired. Mr Jotcham also distinguished the claimed invention from the prior art cited by the opponent.
EVIDENCE IN REPLY
The opponent filed evidence in reply from Dr Hardwick and Mr David Ian Lindsay, and purported evidence in reply from Mr Christopher Peter Tierney. Dr Hardwick essentially countered Mr Jotcham’s evidence by iterating the background knowledge of the art from his evidence in support, and the documentation and the solutions that he and others in the field would have considered at the relevant time in respect to improving the tactility of security documents. Furthermore Dr Hardwick discussed a Japanese patent document, filed in evidence in support, in greater detail to argue its relevance in the present case. Mr Lindsay is a patent attorney employed by the opponent as an intellectual property manager. He exhibited evidence of the publication of a reference manual referred to and exhibited by Mr Tierney in his evidence.
The applicant contended that some of the evidence in reply was not properly reply evidence to the applicant’s evidence in answer. The applicant particularly objected to the evidence of Mr Tierney.
After inviting comments from both parties, a delegate of the Commissioner of Patents directed on 1 February 2016 that Mr Tierney’s evidence is not considered as evidence in the opposition (my emphasis). The delegate considered that two aspects of the evidence were not properly in reply. The first was that Mr Tierney provided expert opinion that particulate-containing ink was known. However Mr Jotcham’s evidence appeared to be specific to the use of particulate-containing ink as a security feature in a security device, and not to particulate-containing ink per se. The second was that Mr Tierney provided expert opinion that coatings and matting agents were known. However Mr Jotcham’s evidence was specific to tactile security features rather than merely the surface roughness of printing per se. The delegate further commented on the applicability of Patent Regulation 5.23 in respect to the above-mentioned reference manual, and concluded that although the exhibit had some relevance to the opposition, he was not satisfied that the information was likely to be determinative of the opposition. Consequently there would be no intent to rely on that document under Regulation 5.23.
APPLICABLE LAW
As a consequence of the Intellectual Property Legislation Amendment (Raising the Bar) Act 2012 (“the Amendment Act”), there are substantial changes to the Patents Act 1990. The date of effect of those changes was 15 April 2013. The application of the Amendment Act in the present case depends on the date of the request for examination. The applicant filed its request for examination on 12 September 2012. Consequently the Patents Act as in force immediately before 15 April 2013 applies in the present case.
This means the former standard for opposition proceedings applies and the opponent bears the onus of establishing that it is clear or practically certain that a valid patent could not be granted (F Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283 at [29], [67]; 50 IPR 305 at 311, 319; Commissioner of Patents v Sherman [2008] FCAFC 182 at [18], [22]; 79 IPR 426; Genetics Institute Inc v Kirin-Amgen Inc [1999] FCA 742; [1999] 92 FCR 106 at [17]).
Section 18 of the Patents Act 1990 relates to patentable inventions. Relevant parts of subsection (1) appear below.
(1)Subject to subsection (2), an invention is a patentable invention for the purposes of a standard patent if the invention, so far as claimed in any claim:
(a) is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies; and
(b) when compared with the prior art base as it existed before the priority date of that claim:
(i)is novel; and
(ii)involves an inventive step; and
(c) is useful; and ………
Subsections 40(2)(a) and (3) at the relevant time were as follows.
(2)A complete specification must:
(a) describe the invention fully, including the best method known to the applicant of performing the invention; and …
(3)The claim or claims must be clear and succinct and fairly based on the matter described in the specification.
S 40(2)(a) FULL DESCRIPTION
The opponent submitted that the minimum height of the protrusion in claim 1 of 10 µm and the minimum height in claim 4 of 20 µm would not result in a tactile feature. The opponent referred to some publications indicating the minimum height necessary for a human to be able to feel the projection. For example the opponent indicated that US 2006/0124016 (“D8”) describes a minimum depth of 25 µm for structures to be palpable. At [0009], D8 states that for a certain depth of engravings in intaglio security elements (25 µm to 120 µm), easily palpable structures are created.
The applicant submitted that the above statement of D8 did not state the minimum limit for a tactile structure formed from particles. In this respect WO 2008/053130 (“D2”), at page 7 lines 29 -33, describes glass beads having a diameter of 20 µm as suitable for providing a rough feel. D2, at page 8 lines 4 – 9, further describes a granular and smooth feel being obtained by incorporating polyurethane micro-beads having an average size approximately equal to 7 µm. It may be noted that these measurements are in respect to particle sizes. In D2 the amount of protrusion would clearly be less. Moreover the applicant correctly pointed out that neither declarant in this opposition presented evidence of any difficulty with the specification in producing something of suitable particle height within each claim.
The opponent further mentioned that the specification disclosed selecting particles based on the D50 average and D90 average particle size. A D50 value is the median value of a particle size distribution, where particle size is usually measured by diameter. For example, if D50= 5µm, then 50% of the particles in the sample are smaller than 5µm and 50% are larger than 5µm. If D90 = 5µm, then 90% of the particles in the sample are smaller than 5µm. The opponent stated the person skilled in the art is not sufficiently taught how to implement the invention by the introduction of an average into the Dx values.
In evidence, only Mr Jotcham discussed the terminology, at [49]. He stated that, in the present context, the notation “Dx average” referred to the mean or average particle size, where particle size is generally measured as the diameter of the particle, particularly for substantially spherical particles. I find this is difficult to accept. A D50 value is the median value which is different from an average value, although the two values may be relatively close in a sample. A D90 value is highly unlikely to be near, let alone the same as, the average value in a sample. As an alternative, I put the following proposition to the parties at the hearing. Having regard to particles not necessarily being spherical but only generally spherical, the notation “Dx average” would make sense if applied as a reference to the average diameter of each individual particle in a sample, with that value for each particle then being used as a measure of the particle size distribution. That is, if D90 average = 5µm, then 90% of the particles in the sample have an individual average particle size smaller than 5µm. I expect this would be understood also from the expression D90 = 5µm, regardless of whether the particles are spherical or not. In this context, the word “average” would be redundant in the specification. However I find its presence in the specification of no significant detriment. There being no counter position in the evidence or at the hearing, I adopt the above meaning.
I conclude the specification describes the invention fully, including a best method of performing it.
S 40(3) FAIR BASIS
There was some comment in evidence and in submissions on the expression “textured surface”, as in claim 1 for example. The opponent noted that claim 1 stated that the printed layer had a textured surface. In construing the scope of claim 1, Mr Jotcham, at [45] of his declaration, argued that the claim required that not all particles protrude from the printed layer to the same extent, giving rise to an uneven surface profile, or as stated in the claim, a textured profile. The opponent further noted though that claim 1 is not limited to Mr Jotcham’s interpretation of the textured surface having an uneven surface profile and that the application does not provide a definition of “textured surface”. Moreover the opponent indicated that the specification as a whole advanced the invention as having a rough, abrasive texture rather than a smooth texture.
For example page 10 of the specification described printed designs for the security feature where a series of raised lines each with a perceptibly different rough abrasive texture, due to the height variation of protruding particles, would be felt by the authenticator when moving a finger across the lines. If the authenticator moved their finger along the lines they would detect a continuous raised area which has a perceptibly variable roughness as they moved across the sample. Also on page 10 and by contrast, there is discussion of the tactile characteristics of the same designs printed with conventional intaglio ink with for example each printed line being raised above the document substrate by 50 µm. In this case, if the authenticator moved their finger across the lines, they would feel a series of raised lines each with the same texture. If the authenticator moved their finger along the lines they would detect a continuous raised area with a smooth texture. The opponent indicated that claim 1 of the application was not limited to a rough texture and was therefore not fairly based.
The Macquarie Dictionary Online ( relevantly defines “texture” as the characteristic disposition of the constituent parts of any body, or the characteristic appearance or essential quality of something especially as conveyed to the touch. In applying this definition to the present case, it would appear the definition relates to features of the printed layer that make it discernible by touch. The degree of discernibility, for example the degree of smoothness of a raised area or by contrast the roughness of the layer, is not part of the definition. Thus, in respect to the expression “textured surface” in claim 1, in isolation the opponent may have a case for lack of fair basis. On the other hand, at least one of the claimed factors that influence the texture is the variable height of particles protruding from the surface of the printed layer. Consequently the textured surface in the claims is not a smooth texture.
I conclude the present claims are fairly based.
S 40(3) CLARITY
At the hearing the opponent repeated the above objection to the notation “Dx average” under the ground of lack of clarity. Similarly the opponent in written submissions repeated the point in respect to the textured surface in claim 1 of the application. I have found there is no case against either of those items under the preceding grounds of opposition. I make the same conclusion in respect to the ground of lack of clarity.
The opponent further suggested there were antecedent and other clarity problems with claim 1 in respect to the heights of the particles and the surface of the printed layer (my emphasis). On the other hand, protruding particles would inherently have a height. Similarly the claimed printed layer would inherently have a surface.
I conclude the claims of the application are clear.
NOVELTY
Under subsection 7(1), an invention is taken to be novel unless it is not novel in the light of the prior art base. Information in a document forms part of the prior art base for the purposes of novelty if it was published before the priority date of a claim, or the information was contained in a specification published after the priority date of the claim under consideration and, if that information is, or were to be, the subject of a claim of the specification, that claim has, or would have, a priority date earlier than that of the claim under consideration (referred to as “whole of contents” novelty).
It is well established that the general test for lack of novelty 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]; 137 CLR 228 at 235:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement”.
This test is satisfied if the alleged anticipation discloses all the essential features of the invention as claimed (see Nicaro Holdings Pty Ltd v Martin Engineering Co, [1990] FCA 40; (1990) 91 ALR 513 at 517). In order to meet this requirement, the prior art must "contain clear and unmistakeable directions to do what the patentee claims to have invented" (The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited, [1972] RPC 457 at 486). In a similar vein, what a prior art document teaches is to be distinguished from what might be “included” or “encompassed”. “A prior broad disclosure thus may not be sufficient ‘in the absence of the skilled addressee understanding or perceiving’ the later claimed invention therein” (Sanofi-Aventis Australia Pty Ltd v Apotex Pty Ltd (No. 3), [2011] FCA 846 at [180]).
The opponent principally relied on the following documents.
WO 2008/053130 (“D2”) – Published 8/5/2008 – Priority date 31/10/2006
This document is in the “whole of contents” category mentioned above, having been published later but having an earlier priority date than the priority date of the present application. D2 relates to a sheet containing a security means. The security means comprises at least one zone having an interference effect. In the same region as the interference zone, there is located at least one tactile recognition element. The tactile recognition element may comprise particles partially incorporated into the interference zone and/or into the support for the sheet. In this way, the particles form a relief at the surface of the security means thus giving a tactile effect to the security means. The size of the particles may be between 5 and 100 µm. Figure 1 of D2, reproduced below, is illustrative.
In one embodiment, the sheet 1 comprises a support 2 made of a fibrous material, based on cellulose fibres, on which is a security means composed of a zone having an interference effect and of a tactile recognition element. The interference zone may comprise iridescent pigments 6. The tactile recognition element is composed of particles 7 which may be of polypropylene having a generally spherical shape and having an average size of 30 µm. The particles may be incorporated in the bulk of the zone having the interference effect. The assembly comprising the iridescent pigments 6 and the polypropylene particles 7 may be deposited by means such as rotary screen printing.
The opponent submitted that a measurement of the items of Figure 1 of D2 revealed particle protrusions and densities as in claim 1 of the present application. For example the opponent suggested that Figure 1 of D2 shows particles 7 of a total height of 12 mm of which approximately 25%, about 3mm, protrudes above the surface of the printed layer. Scaling this down to particle sizes of 40 to 100 µm would result in particles protruding by about 10 to 25 µm. In respect to density, the opponent noted that Figure 1 shows 4 particles in a length of strip of about 120 mm. Scaling the indicated particle height of 12 mm down to an actual height of about 100 µm would result in 4 particles in a length of strip of 1 mm. Assuming a uniform distribution of particles, there would be 16 particles per mm2. On the other hand, there is no substantive discussion in D2 of any dimensional relationships between the particle sizes, the amount by which they protrude from any printed layer and the density of particles in a given area. Moreover, the opponent’s approach assumes the drawings of D2 are technical drawings with exactness of scale and measure not usually the case or expected of drawings in patent specifications. The drawings in D2 are clearly sketches and not necessarily accurate representations of the physical product. I conclude there are no clear and unmistakable directions of particle protrusions and densities as claimed in the present application.
Moreover the claimed invention requires the particles to protrude from the surface at variable heights. One may suggest the particles of D2 protrude at variable heights if Figure 1 of D2 is viewed at minute scales. On the other hand, when viewed holistically, I would rate the particles to protrude from the surface at substantially the same height. One could also suggest the use of the range of particle sizes mentioned in D2, 5 to 100 µm, would result in equivalent variation in the heights by which the particles protrude above the surface. Figure 1 though does not suggest variation in particle sizes. The descriptive part of D2 discusses circumstances where different particle sizes may be used. For example page 7 describes polyurethane particles of diameter between 27 and 35 µm withstanding copperplate printing processes well. On the same page, for a rough feel, glass beads of 20 µm diameter, incorporated into the interference zone, are suitable. On page 8, for a smooth feel, expandable thermoplastic microspheres of size between 10 and 25 µm are suitable. For a granular and smooth feel, polyurethane micro-beads of 7 µm average size are suitable. However, for each particular desired outcome, particles of substantially the same type and size are suggested for the tactile recognition element. Moreover this section of D2 is silent in respect to the extent of protrusion of any particles from the surface. On page 9 of D2, an embodiment is described of a security means comprising at least two different tactile recognition elements to provide contrasting various feels. On the other hand, D2 remains inconclusive as to whether different particle sizes are involved in the same security feature, let alone whether different particles protrude from the surface at variable heights. I would note that, in the examples provided above for a rough and a smooth feel, a particle size of about 20 µm is suggested in both cases.
I conclude the claimed invention is novel over D2.
JP 2006-283238 (“D10”) – Published 19/10/2006 – verified English translation supplied
This document relates to a multi-ply paper with an identifying mark between two or more layers. The identifying mark is to enable visually-impaired persons to distinguish denominations of bank notes and the like with finger touches. The identifying mark may be printed on a surface of a non-woven fabric positioned between the two or more layers by screen printing, intaglio printing or the like. The identifying mark has a predetermined height. The surfaces of each of an upper and a lower paper layer has at least one recess and projection in a region where the identifying mark is formed due to the presence of the identifying mark of predetermined height. The height of the identifying mark may be between 70 to 250 µm. The identifying mark may be mixed with glass flakes. To provide a feeling of roughness, the identifying mark may use glass flakes having an average particle size of 40 to 140 µm, a thickness of 1 to 5 µm and a Mohs scale hardness of 6.5. The recesses and projections of the surfaces of the paper layers may be repeated at spacings of around 0.5 to 1 mm and the differences between the heights thereof may be around 20 to 75 µm.
The applicant submitted that the security feature in D10 was not printed onto a document but sandwiched between a number of layers and so the particles did not protrude and could not be felt directly by the finger. It may be said that the presently claimed invention is not limited to this level of detail. The claimed invention merely defines particles protruding from a printed layer. Thus the presence of additional outer layers in D10, and whether the tactility with the particles is direct or indirect, may be irrelevant for anticipation of the claimed invention. I accept that claim 1 defines the printed security feature having a tactile feel and concludes with the nature of the particles and their protrusion from the printed layer being such that the printed layer has a textured surface. This may suggest the tactility is direct such that the printed layer is the outer layer. On the other hand, claim 1 does not explicitly define the printed layer to be the outermost layer and so I would not exclude D10 on this point alone.
Figures 1 and 3 of D10 are illustrated below.
In Figure 1, a security document comprises a multi-ply paper including a lower paper layer 1 and an upper paper layer 3. An intermediate layer of a non-woven fabric 2 has the identifying mark 4 printed thereon. In the lower drawing of Figure 1, the surfaces of each of the upper and lower paper layers clearly have recesses and projections due to the presence of the underlying identifying mark 4. The recesses and projections 5 and 5´ on the surfaces of the paper layers appear wave-like, similar to the pattern of the identifying mark in Figure 1. D10 describes, at page 9 lines 2 to 6, the identifying mark as enabling visually-impaired persons to distinguish denominations of bank notes and the like with finger touches. Thus the recesses and projections of the paper layers 1 and 3 are tactile and this is caused by the printed, underlying identifying mark 4. I conclude the printed security feature in D10 has a tactile feel and the printed layer has a textured surface as defined in claim 1 of the application, albeit felt in D10 indirectly through a paper layer.
In Figure 3 of D10 the identifying mark 4 includes glass flake pigment particles 7 mixed therewith. The applicant submitted the ink layer covered the glass flakes and so the particles did not protrude from a printed layer as required by claim 1 of the application. The Macquarie Dictionary Online ( defines a layer as a thickness of some material laid on or spread over a surface, or a stratum, or in geology, a single bed of sedimentary rock. The common theme from these definitions is of a layer being relatively flat or even. In this sense I think it could not be fairly said that the whole identifying mark 4 with the glass flakes in Figure 3 of D10 is a layer. Rather, the printed layer is the wave-like part of the identifying mark 4, as best seen in the lower drawing of Figure 1. The glass flake particles, whilst being mixed within the printed ink, may fairly be said to protrude from the printed layer in D10, where the printed layer is the wave-like portion. Consistently with this interpretation, page 31 of D10 describes Figure 3 as illustrating an example in which pigment particles protrude from an ink coating. I conclude that D10 discloses particles protruding from a printed layer, and as discussed above, the particles provide the printed security feature with a feeling of roughness and thus a tactile feel and so provide the printed layer with a textured surface, as in claim 1 of the present application.
Page 8 of D10 describes the identifying mark as having a height of 70 to 250 µm. However D10 does not elaborate further on the derivation of these numbers. For instance, given the wave-like nature of identifying mark 4, D10 does not establish whether the measurements are from some absolute reference point, or of the thinnest and thickest parts of the identifying mark, as best seen in the lower drawing of Figure 1 for example. Additionally D10 does not indicate whether the glass flake particles are included in the measurements. Furthermore this description provides no indication of the amount of protrusion of particles from the printed layer. On the other hand the drawings of D10 may be sufficient. Figure 8 of D10, with some explanation, is reproduced below.
Page 32 of D10 describes Figure 8 as indicating the surface state of the multi-ply paper with the identifying mark of Example 1 in D10, which example at page 28 describes the ink height of the identifying mark to be approximately 130 µm on average and the glass flake average particle size to be 80 µm. In Figure 8 the overall height difference appears to be at least 150 µm. It needs to be noted though that the profile in Figure 8 is of the surface of the paper layer and not the profile of an identifying mark directly. One could suggest from the profile that there is clearly a height extension of well over 10 µm in the paper layer. Moreover, one could also suggest from Figures 1 and 3 that the wave-like pattern of the paper layer is smoother than that of the identifying mark and thus the height extension of the identifying mark is greater than that of the paper layer. The applicant submitted that D10 though did not clearly indicate whether the height difference of the paper layer surface was caused by the wave-like part of the identifying mark alone and/or the glass flake particles. On the other hand, Figure 3 clearly illustrates a significant proportion of the glass flake particles extending above the wave-like portion of the identifying mark and thus protruding from a printed layer. Given a glass flake average particle size of 80 µm, as mentioned above, I would regard Figure 3 of D10 as clearly disclosing the protrusion of particles from a printed layer by more than 10 µm as claimed in the present application. Moreover I am also satisfied that Figure 3 of D10 adequately illustrates variable height protrusion by the particles such that the printed layer has a textured surface as claimed in the present case.
The opponent also noted the disclosure in D10 of the differences between the heights of the recesses and projections of the paper layers being around 20 to 75 µm and that the recesses and projections repeated at spacings of around 0.5 to 1 mm (page 30 of D10). However this disclosure is in respect to the fine recesses and projections shown in region (e) of Figure 8 at the top of the illustrated major projection on the paper layer surface. Nonetheless D10 at page 8 discloses a role of the glass flakes in forming these fine recesses and projections. Whilst the point is moot in the light of my finding already that D10 discloses particles protruding from a printed layer, I would agree with the applicant that D10 does not establish the cause of the fine recesses and projections being necessarily due alone to the extent of protrusion of glass flake particles from a printed layer.
The opponent relied on Figure 8 of D10 to state that region (e) of a plurality of recesses and projections extended about 13 mm. The opponent further stated that Figure 3 showed at least three particles or flakes within each projection. On the other hand the latter would appear to be in respect to the major projection, and from the ink layer directly, and not the fine recesses and projections in the paper layer shown at the top in Figure 8. Nonetheless the opponent suggested a spacing of 1 mm between projections meant there would be 1 projection per mm length with at least three particles per projection so that a square area of 1 mm2 would have at least nine particles. The opponent relied on Dr Hardwick’s fourth declaration at [13] where he stated the claimed 3 particles per mm2 was taught in D10 at page 30 lines 6 and 7. However that passage of D10 merely states that the fine recesses and projections, not particles protruding from a printed layer, were repeated at spacings of around 0.5 to 1 mm. Mr Jotcham at [99] suggested Dr Hardwick’s position could only be inferred if he considered each recess and each projection to be caused by a particle protruding at least 10 µm. D10 does not provide any correlation between the glass flake particles in Figure 3 and the fine recesses and projections shown in Figure 8. Moreover, Figure 3 of D10 provides no indication of the closeness of the glass flake pigment particles illustrated therein. I find the claimed density feature of particles protruding in an amount of at least 3 particles per mm2 of the printed layer is not disclosed in D10.
I conclude the claimed invention is novel over D10.
INVENTIVE STEP
Subsection 7(2) of the Patents Act states that an invention is taken to involve an inventive step unless it would have been obvious to a person skilled in the art in the light of the common general knowledge, considered alone or together with the prior art. A document is prior art for this purpose if "a skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded [the document] as relevant" (Subsection 7(3) at the relevant time).
The test for whether an invention is obvious is whether it would have been a matter of routine to proceed to the claimed invention. In Wellcome Foundation Ltd v VR Laboratories (Aust.) Pty Ltd, [1981] HCA 12 at [45], 148 CLR 262 at 286, Aickin J 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."
The High Court in Aktiebolaget Hässle v Alphapharm Pty Ltd, [2002] HCA 59, (2002) 56 IPR 129 at [50] – [53], appeared to approve of the Wellcome test. In discussing what was meant by a matter of routine the High Court noted and accepted an affinity with the approach in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd, (1970) 87 RPC 157, of whether the person skilled in the art would directly be led as a matter of course to try what was claimed in the expectation that it might well produce a useful alternative. In Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [No. 2], [2007] HCA 21, (2007) 235 ALR 202, general principles regarded to be of continuing relevance, at [50] – [52], were that “obvious” means “very plain”, a scintilla of invention remains sufficient to support the validity of a patent, there must be some difficulty overcome, some barrier to be crossed, and an invention must be beyond the skill of the calling.
Where the invention lies in a combination of integers, the question is not whether each individual integer was obvious but rather whether the combination as a whole was obvious when compared to the prior art base. In Alphapharm at [41], the High Court stated:
“The claim is for a combination, the interaction between the integers of which is the essential requirement for the presence of an inventive step. It is the selection of the integers out of ‘perhaps many possibilities’ which must be shown by Alphapharm to be obvious, bearing in mind that the selection of the integers in which the invention lies can be expected to be a process necessarily involving rejection of other possible integers.”
Person Skilled in the Art
In Root Quality Pty Ltd v Root Control Technologies Pty Ltd, [2000] FCA 980, Finkelstein J stated at [70] and [71] that the skilled addressee is the person to whom the patent is addressed and who must construe it. Such person works in the art or science with which the invention is connected or is likely to have a practical interest in the subject matter of the invention. A variety of people may have that interest. Finkelstein J further noted various descriptions given to the skilled addressee. These included the “uninventive skilled worker in the particular field” (Leonardis v Sartas No 1 Pty Ltd, (1996) 67 FCR 126) and the “person skilled in the art” (Genentech Inc v Wellcome Foundation Ltd, (1989) 15 IPR 423).
The opponent submitted 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. This included reviewing patent specifications, textbooks, conference proceedings and published papers. The opponent further submitted that a skilled addressee working in this area would have a higher level science or engineering qualification, with either qualifications in physics or industry experience relating to the physics of optical devices, and practical experience with optical security devices. Moreover the opponent suggested that Dr Hardwick was representative of the skilled person in the art. In contrast to Mr Jotcham, Dr Hardwick worked in the field of security documents in Australia.
The applicant submitted the skilled addressee in the present case would be a person with a practical interest in the design or manufacture of security devices for security documents. That person would not be inventive but would have a reasonable knowledge of the area gained from attendances at conferences, review of textbooks and reviewing published papers. Additionally the applicant submitted that Dr Hardwick was plainly inventive and had attributes beyond that of the non-inventive worker in the field. A similar conclusion was made in Innovia Security Pty Ltd v De La Rue International Limited, [2015] APO 31, at [54] for example. Moreover the applicant submitted that Mr Jotcham, whilst also inventive and privy to confidential information, had a skill base more akin to the hypothetical person skilled in the art.
The evidence from both parties needs to be treated with some caution. Dr Hardwick was clearly inventive, involved in research and development (“R&D”) of the polymer banknote as a team leader at NPAL, and also involved in R&D related to banknote security whilst working in technical working groups and committees internationally. While the present field may be highly technological, I would not expect the field to be exclusive to leading R&D personnel. I regard Dr Hardwick to be above the level of the uninventive skilled worker in the field as required from the Root Quality decision. Mr Jotcham was also clearly inventive having amassed a significant patent portfolio and was involved in R&D in document security. His experience has been predominantly in the United Kingdom and so he may have limitations to comment on practices in the field in Australia at the relevant time. Similarly to Dr Hardwick though, I regard Mr Jotcham to be over-qualified beyond an uninventive skilled worker in the field. In respect to inventive step I will rely on the evidence of both parties to the extent that it is of assistance whilst being mindful that some elements of each party’s evidence may contain material to which the uninventive skilled worker in the field would not have been privy to. I see no substantial reason to give one party’s evidence more weight over that of the other party.
Common General Knowledge
The opponent relied on Dr Hardwick’s evidence to submit the following was common general knowledge at the relevant time. Printed security features having a tactile feel were commonly known (Dr Hardwick’s first declaration at [32]). Printed layers with particulate containing inks were commonly known (Dr Hardwick’s second declaration at [10]). Increased particle height led to increased roughness or tactility (Dr Hardwick’s second declaration at [28.2]). A sensible upper limit for particle protrusion in the context of banknotes was 100 µm. Protrusions larger than this would create problems relating to the overall thickness of the banknote (Dr Hardwick’s second declaration at [28.3]). Various particle size distributions and various materials for the particles were also common general knowledge as were various printing processes such as screen, lithographic and intaglio printing.
The applicant accepted some elements of the opponent’s description of the common general knowledge. However the applicant did not accept that many of those elements were security features or common general knowledge in the field of document security. For instance the applicant acknowledged the existence of banknotes with a tactile feel. However the applicant stated the presence of overcoats with particles on banknotes was for providing a matting effect on banknotes which was not a security feature. Similarly the applicant acknowledged that screen, lithographic and intaglio printing processes were common general knowledge but did not accept that the use of such processes in security features was common general knowledge at the relevant time.
The opponent further submitted the common general knowledge was represented in part by a book entitled “Optical Document Security, Third Edition”, by Rudolf L. van Renesse, published by Artech House, Boston & London, 2005 (“D3”). Dr Hardwick at [16.3.2] of his second declaration referred to D3 as a text book known universally within the security printing industry. The opponent submitted that D3 was a well-known reference book in the field of optical document security and that it described the state of the art at the end of 2004, including substrate-based security, printing inks and printing techniques, printed security features, diffraction and interference based security features, security design and evaluation, and biometrics. The applicant accepted the extract of D3, presented in evidence by the opponent, would have been common general knowledge in the art at the relevant time.
Page 115 of D3 under section 4.3.1 describes the nature of tactility resulting from intaglio printing. Page 117 under section 4.3.1.1 describes the use of tactile intaglio print as a security feature. This section also acknowledges the problem that intaglio embossing of documents gradually decreases during circulation. Heavily circulated bank notes are specifically exemplified as possibly losing their tactile intaglio characteristics almost completely.
Given the applicant accepted that the D3 extract reflected the common general knowledge, and that the title and information within D3 is clearly directed to security documents including banknotes, it would appear that the applicant’s position, that certain print processes and features were common general knowledge but not in document security, is somewhat contradictory. On the available evidence I would regard the following as common general knowledge in the document security field at the relevant time. Printed security features with a tactile feel were commonly known. The tactility arising from intaglio print in security documents was also commonly known.
In respect to printed layers with particulates in inks in the document security field, Dr Hardwick, at [6] to [11] of his second declaration, discussed the development of particulate containing inks for banknotes from the 1980s. He described the purpose for experimenting with such inks to make the polymer banknote have a rougher, more paper-like feel. He indicated that NPAL’s use of such inks would have been very well known by the late 1990s and early 2000s. While I have earlier indicated that Dr Hardwick’s evidence needs to be treated with some caution, it may be noted that D3 contains some discussion regarding particles in ink. In the section on page 115 preceding the discussion of printing techniques, D3 mentions second-line and third-line security features. Second-line security features required some tool for their inspection and were generally not secret and were available for the general public, shopkeepers and cashiers. Third-line security features were an alternative that involved the addition to the ink of traces of secret compounds, whose identification required some type of specialised laboratory analysis. Such product markers were invariably subject to a confidentiality agreement between the manufacturer and the customer. Third-line inspection may involve spectral, chemical or biochemical analysis directed at the presence of certain trace substances, their particular ratio of concentration, or their physical characteristics. This discussion in D3 implies the use of particles, at least trace compounds, in ink in the document security field. Page 4 of the present specification acknowledges the use of particles in conventional intaglio ink. However this acknowledgement alone does not establish this was necessarily common general knowledge at the relevant time. At [41] in evidence in answer, Mr Jotcham stated that he would not have thought of introducing hard particles into the ink of security documents at the priority date. Nonetheless I find the discussion on this point in D3 to be highly persuasive. I am prepared to accept that printed layers with particulates in inks would have been common general knowledge in the document security field at the relevant time.
A telling point though is that D3 discussed these particulates as trace compounds that were secret and required specialised laboratory analysis for them to be identified. Thus the use of particulates in ink as tactile security features is clearly not able to be drawn from D3. Mr Jotcham at [59] in evidence in answer made a similar distinction. He stated that Dr Hardwick’s evidence of overcoats containing particles on polymer banknotes appeared to be for the purpose of providing a matt effect rather than as a tactile security feature. Similarly Dr Hardwick’s stated purposes for using particulate inks to make polymer banknotes have a rougher, more paper-like feel does not equate to their use as a tactile security feature within banknotes. On the available evidence, I find it cannot be said that the use of particulates in inks in the document security field as tactile security features was common general knowledge at the relevant time. It follows that the degree of particle protrusion and the variable heights of particles such that the printed layer had a textured surface would also not have been common general knowledge at the relevant time.
Whether There is an Inventive Step
Common General Knowledge Alone
The opponent submitted the claimed invention lacked an inventive step in the light of the common general knowledge. Principally the opponent relied on D3 and Dr Hardwick’s second declaration to state that the addition of particles to ink to provide roughness to improve the tactility of the printed features was common general knowledge at the relevant time. However there is also the further issue of the use of the particles as tactile security features. Since I have found that the addition of particles to ink in the document security field as tactile security features was not common general knowledge, the opponent’s argument must fail.
I conclude the claimed invention has an inventive step in the light of the common general knowledge alone.
Prior Art Documents
There was some dispute between the parties as to the extent to which the person skilled in the art could be reasonably expected to have ascertained relevant patent documents. This was particularly the case with D10, a Japanese patent document that required an English translation. On the other hand, both Dr Hardwick and Mr Jotcham indicated that they referred to patents, although for different purposes. At [17] of his first declaration, Dr Hardwick stated that patent specifications were among the main resources he consulted since at least the early 1990s and that his R&D team similarly would consult patent specifications. The reasons for reading patent specifications were to gain ideas for solving specific problems, as a source of information regarding developments in the field and to ensure NPAL had freedom to operate in the areas in which it was carrying out R&D. At [15] of his evidence in answer, Mr Jotcham stated that, on developing ideas for solving clients’ problems or needs, he would refer to external documents such as patent documents. This was done primarily to check whether the ideas he had developed could be the subject of patent protection. While I have found that both declarants were over-qualified beyond an uninventive skilled worker in the field, it may be noted that D3 cited some patent specifications amongst its references. Clearly the industry generally had regard to patent documents. In respect to patent documents in other languages, the applicant accepted that the field of document security was an international one. I would expect a diligent searcher and person with a practical interest in the design or manufacture of security devices for security documents in the present case, having established the potential relevance of a patent document through English language abstract, drawings or other means, to obtain a full text version in a language of choice. I am satisfied the hypothetical person skilled in the art of document security could be reasonably expected to have ascertained patent documents from the major industrialised countries.
The opponent principally relied on the following documents.
JP 2006-283238 (“D10”)
This document clearly relates to a security feature that enables visually-impaired persons to distinguish denominations of bank notes and the like with finger touch. Consequently I find that the hypothetical person skilled in the art of document security could be reasonably expected to have ascertained, understood and regarded D10 as relevant. Earlier I found that D10 did not disclose the claimed density feature of particles protruding in an amount of at least 3 particles per mm2 of the printed layer.
The opponent submitted that the choice of the particle sizes and densities would have been obvious to the person skilled in the art. In particular, starting from D10, the person skilled in the art looking to achieve a desired tactility or surface texture would be reasonably expected to arrive at the ranges specified in claim 1. The applicant submitted that the opponent’s assertions were based on hindsight without proper evidence of what experimental work on different particles and particle densities the person skilled in the art would have been motivated to undertake.
The thresholds for supporting a finding of lack of inventive step are relatively high. As indicated above, one 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 or would directly have been led as a matter of course to try what was claimed in the expectation that it might well produce a useful alternative. Assuming the background challenge stated in the specification was to generate significant additional or different tactility to the conventional intaglio print, there would have been several potential answers. Mr Jotcham at [17] of his evidence in answer mentioned that one might consider increasing the depth of the recesses and channels in the intaglio printing plate to increase the height of the ink deposited on the substrate. At [21] and [22], watermarks and window threads were other security features that may be perceived by touch. In developing new features not available at the priority date, Mr Jotcham stated, at [26] and [27], that he would have considered options such as piezoelectric effects and perforated substrates, amongst others. The present specification claims variable height protrusion of particles in the printed layer, amongst other features. Clearly the particular density of particles, in isolation, or in combination with other tactility features, would have been just one of many possible parameters for enhancing the tactility of a security feature. I find the evidence in this case is insufficient to establish that the person skilled in the art would directly have been led as a matter of course to try particle densities of at least 3 particles per mm2 as claimed.
I conclude the claimed invention has an inventive step over D10.
Microchem (“D5”)
The opponent relied on D5 combined with the common general knowledge including D3 to argue that the claims lacked an inventive step.
D5 consists of four web pages from the Internet Archive Wayback Machine. The content of the web pages are from an organisation called Microchem, stated to be a global provider of high-performance micro-beads.
There are cases where the reliability of publication dates from the Internet Archive is discussed (for example, Sheng-Ping Fang, [2011] APO 102, and Visa Inc. v CardinalCommerce Corporation, [2011] APO 34). In both cases the delegates acknowledged that the Internet Archive may not be entirely reliable in respect to dates of availability or content on a particular date. On the other hand there is no evidence before me in this case of anything being amiss regarding D5’s content from the Internet Archive. Moreover the latest capture date embedded in the Web-Archive URL at the foot of each of the pages of D5 is 1 January 2008. This was two months before the priority date of the present application. I am prepared to accept that D5 was available prior art at the relevant time.
The primary issue with D5 is its ascertainment by the hypothetical person skilled in the art at the relevant time. It may be noted that, at page 15 of the present specification, Example 3 relates to the use of particles supplied from Microchem in screen ink. However this does not clearly establish that the hypothetical person skilled in the art could be reasonably expected to have ascertained web pages by the same supplier. At [16.5] of his second declaration, Dr Hardwick stated that, when new materials for developments were needed, one of his staff would undertake an Internet search and contact various suppliers for the required materials. Dr Hardwick concluded that it was reasonable to assume that D5 and the supplier’s associated products could have come to the attention of NPAL’s employees who were tackling particular problems requiring particulate matter.
D5 relates to polymeric micro-beads based on polyurethane and highly cross-linked acrylic polymers for the production of special lacquers and varnishes. D5 is silent in respect to micro-beads in printed inks. Furthermore D5 is silent in respect to applications in the field of document security. Instead the listed applications of the coatings are as furniture coatings, wood floor coatings, anti-slip coatings, wall coatings, and in TV housings and consumer electronics. From the evidence I am unconvinced that an uninventive skilled worker in the field of document security could be reasonably expected to have ascertained D5 at the relevant time. In any case, D5 is silent in respect to a security document having any of the claimed features of the presently alleged invention.
I conclude the claimed invention has an inventive step over D5.
US 2003/0089251 (“D6”) – Published 15/5/2003
The opponent similarly relied on D6 combined with the common general knowledge including D3 to argue that the claims lacked an inventive step.
D6 relates to printing ink compositions containing micro-particles made of a resinous material or plastic material such as polyurethane or polystyrene. Alternatively the printing ink may contain glass beads.
There is no mention in D6 of applications to the field of document security. On the other hand the title of D6 relates to micro-particle screen printing inks. The abstract of D6 further relates to the arrangement of beads to effect patterns of aberrations in the printed ink surface that provide certain tactile properties. I am satisfied the person skilled in the art in the present case could be reasonably expected to have ascertained, understood and regarded D6 as relevant before the priority date.
D6 describes certain embodiments of a printed article in which the beads stack upon one another to effect a relatively continuous but random pattern of aberrations in the printed ink surface that provides a tactile property. The tactile property can range from a soft, leathery feel to a soft, velvety feel to a rough, sandpaper feel based on the mean particle size of the micro-spheres [0007]. Polyurethane micro-spheres with a mean particle size of about 18 – 25 µm are mentioned at [0006] of D6. Claim 1 of D6 claims a screen printing ink with polymeric micro-particles having a mean particle size of at least about 10 – 60 µm.
D6 discusses the stacking of beads in terms of protrusions from the ink layer ([0012] and [0013]). It may be noted that [0013] defines the term “protrude” as contemplating that a substantial fraction of the protruding surface of the bead will be entirely covered with ink, but a layer whose thickness is relatively small relative to the ink bed. That is, while a protruding bead may be covered with ink, it is still nonetheless a protrusion because of the relatively thin ink coverage compared to the thickness of the ink layer or ink bed itself. On the other hand there is no indication in D6 of the heights of protrusion of any sized particles from the printed layer. Nonetheless it may be expected in the art that the beads of D6 would generally protrude by at least 10 µm, as claimed, to provide at least the tactile properties mentioned in D6 at [0007]. I am prepared to accept the beads in D6 would protrude, as defined in D6, by at least 10 µm.
The opponent suggested the stacking of beads made variable height protrusion inherent in D6. However D6 does not mention stacks of variable height. Thus variable height protrusion of particles from the printed layer for any one application cannot be fairly said to be disclosed in D6. Moreover D6 is silent in respect to particle densities. Furthermore I find the evidence in this case is insufficient to establish that the uninventive person skilled in the art would directly have been led as a matter of course to try the variable height particle protrusions and particle densities as claimed in the present case.
I conclude the claimed invention has an inventive step over D6.
US 2007/0178295 (“D1”) – Published 2/8/2007
D1 relates to a security substrate comprising an oriented, foamed article. The foamed article has an integral security element. At [0008] of D1, visual, tactile or electronic authentication of the substrate is mentioned. I am satisfied the person skilled in the art in the present case could be reasonably expected to have ascertained, understood and regarded D1 as relevant.
From [0077] of D1 onwards, an ink receptive surface may be provided for the foamed article. At [0085] the ink receptive layer may contain a particulate additive which may enhance the roughness characteristics of the ink receptive surface. The applicant pointed out that the ink receptive layer of D1 was not a printed ink layer but rather a background coating to which a printed ink layer may be applied.
In D1 the ink receptive layer is clearly additional to the security element. Moreover tactile security is achieved by embossment of the article rather than by particle protrusions. Thus there is no disclosure in D1 of a security feature comprising a printed layer with particles as claimed in the present case. Moreover the evidence in the present case is insufficient to establish that the person skilled in the art, from D1, would have made the transference of the particulate features of the ink receptive layer of D1 over to the printed layer as claimed in the present case. In any case there is no disclosure of a security feature comprising a printed layer with variable height particle protrusions and particle densities as claimed, such that the printed layer has a textured surface.
I conclude the claimed invention has an inventive step over D1.
MANNER OF MANUFACTURE
The opponent referred to Commissioner of Patents v Microcell Ltd, [1959] HCA 71, (1959) 102 CLR 232, to state that a new use of a known substance is patentable provided the use takes advantage of a previously unknown property. In Microcell, the claims defined rocket projectors comprising tubes of reinforced synthetic resinous plastic material. The High Court found that the specification indicated that tubular self-propelled rocket projectors were well known articles of manufacture and that synthetic resinous plastics reinforced with mineral fibres were well-known materials. Furthermore the properties of the reinforced plastic materials were generally known, and in particular that they possessed a combination of great strength and lightness. The patent application was refused as there was:-
“… in truth nothing but a claim for the use of a known material in the manufacture of known articles for the purpose of which its known properties make that material suitable.” (page 251).
The opponent similarly cited NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd, [1995] HCA 15, (1995) 183 CLR 655. In that case, the patent did not claim the discovery of any new property of phosphors making them suitable for use in highly loaded low-pressure mercury vapour discharge lamps. The luminescent qualities of phosphors had long been known. The threshold requirement of an invention, apparent on the face of the specification, was not satisfied. The opponent submitted the claimed invention in the present case similarly was for a mere substitution of a known ink, used in conventional intaglio printing for example, with known particulate containing ink.
As mentioned earlier, the specification acknowledges the use of particles in conventional intaglio ink. On the other hand the claimed invention is to a security feature with the combination of a printed layer with particles protruding at variable heights, but at least a particular minimum height, and at least a particular minimum density, such that the printed layer has a textured surface. This is stated to provide a tactility of the security feature significantly different from the tactility of a raised image produced from conventional intaglio ink. I am satisfied a threshold requirement of invention is apparent on the face of the specification.
I conclude the claimed invention is for a manner of manufacture.
CONCLUSION
I have concluded that the claimed invention, on the available evidence, is novel, has an inventive step and is for a manner of manufacture. Furthermore I have found that the specification describes the invention fully, and that the claims are fairly based and clear.
I conclude the opposition fails on all grounds raised in this opposition.
Subject to appeal, I direct the application proceed to grant.
COSTS
Both parties accepted that costs should follow the event. In the present case I see insufficient reason to depart from that approach. I award costs in accordance with Schedule 8 against the opponent, Innovia Security Pty Ltd.
M. G. Kraefft
Delegate of the Commissioner of Patents
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