Innovia Security Pty Ltd v De La Rue International Limited
[2016] APO 35
•15 June 2016
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Innovia Security Pty Ltd v De La Rue International Limited [2016] APO 35
Patent Application 2010311163
Title:Security device and method of manufacturing the same
Patent Applicant: De La Rue International Limited
Opponent: Innovia Security Pty Ltd
Delegate: Dr S. K. Aggarwal
Decision Date: 15 June 2016
Hearing Date: 24 March 2016, in Canberra
Catchwords: PATENTS – opposition to grant – lack of novelty of claims not established – prior art could have been reasonably ascertained, understood and regarded as relevant by the skilled addressee – insufficient evidence to establish that claims lack inventive step in light of prior art and common general knowledge – specification describes the invention fully – claims are clear and succinct – cost in accordance with Schedule 8 awarded against the opponent.
Representation: Patent applicant: Mr Tom Cordiner (Counsel)
Opponent: Mr Roger Green assisted by Mr Nigel Pereira of the patent attorney firm Watermark
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2010311163
Title:Security device and method of manufacturing the same
Patent Applicant: De La Rue International Limited
Date of Decision: 15 June 2016
DECISION
The opponent does not succeed on any of the grounds of opposition. Subject to appeal, I direct that the application proceed to grant.
I award costs against the opponent.
REASONS FOR DECISION
Background
Patent application 2010311163 (WO 2011/051669) directed to a “Security device and method of manufacturing the same” was filed on 27 October 2010 by De La Rue International Limited (“the applicant”). The application claims priority from British application 0919109.9 and US application 61/272771, both filed on 30 October 2009 in respective countries. The application 2010311163 was advertised accepted on 4 September 2014.
A notice of opposition to the application 2010311163 was filed on 4 December 2014 by Innovia Security Pty Ltd (“the opponent”) and a statement of grounds and particulars was filed on 4 March 2015.
The opponent completed their evidence in support on 4 June 2015. The applicant completed their evidence in answer on 4 September 2015. No evidence in reply was filed by the opponent.
The opponent and the applicant filed their summary of submissions prior to the hearing on 9 March 2016 and 17 March 2016 respectively through their respective attorneys.
The Statement of Grounds and Particulars
As a consequence of the Intellectual Property Legislation Amendment (Raising the Bar) Act 2012, there are substantial changes to the Patents Act 1990. In the case of the present application, the grounds of opposition are governed by the Patent Act in force before 15 April 2013.
The grounds of opposition specified in the statement of grounds and particulars relate to non-compliance with sub-paragraphs 18(1)(a), 18(1)(b)(i), 18(1)(b)(ii), 18(1)(c) and sub-sections 40(2) and 40(3) of the Patents Act 1990.
In the statement of grounds and particulars, the opponent states that none of the claims are novel in light of a single prior art document US 2008/0309063 A1 (Exhibit BAH-5, “D1”). However in relation to inventive step, several prior art documents have been cited. It has been asserted that the remaining claims are not inventive in view of D1 when combined with another prior art document and/or common general knowledge in the art. The statement of grounds and particulars also asserts that the claimed invention lacks a manner of manufacture and is not useful. Furthermore it has been asserted that the opposed specification lacks sufficiency. Several aspects of non-clarity and non-succinctness have also been raised.
The Specification
The invention relates to a security device for use on articles of value such as banknotes, cheques, passports, identity cards and other documents for securing value or personal identity.
The specification concludes with twenty one claims of which only claims 1 and 18 are independent. The independent claims read as follows:
1.A security device comprising at least two lenticular devices, each lenticular device having an array of elongate lenticular focusing elements located above respective sets of image strips, wherein the elongate directions in which the lenticular focussing elements of the two lenticular devices extend are orthogonal, wherein the two lenticular devices, when viewed at at least one viewing condition, for example perpendicularly, present a recognisable image to the naked eye of the observer made up by image portions from each lenticular device, wherein the image strips define different views of the respective image portion whereby as the security device is tilted about an axis parallel to the elongate direction of either of the lenticular devices, the respective image portion appears to move laterally while the other image portion remains stationary.
18.A method of manufacturing a security device, the method comprising providing at least two lenticular devices, each lenticular device having an array of elongate lenticular focusing elements located above respective sets of image strips, wherein the elongate directions in which the lenticular focussing elements of the two lenticular devices extend are orthogonal, wherein the two lenticular devices, when viewed at at least one viewing condition, for example perpendicularly, present a recognisable image to the naked eye of the observer made up by image portions from each lenticular device, wherein the image strips define different views of the respective image portion whereby as the security device is tilted about an axis parallel to the elongate direction of either of the lenticular devices, the respective image portion appears to move laterally while the other image portion remains stationary.
Evidence
The evidence in support consists of a single statutory declaration from Dr Bruce Alfred Hardwick.
Dr Hardwick was employed with Note Printing Works (NPW)/Note Printing Australia Limited (NPAL), a division of the Reserve Bank of Australia, until his retirement in 2005. He was also involved with the opponent as they are also a related Reserve Bank of Australia company. During his employment, he played a significant role in banknote printing. The first Hardwick declaration relies on exhibits BAH-1 to BAH-17 in support of the opponent’s case.
The evidence in answer consists of single statutory declaration from Dr Malcom Robert Murray Knight.
Dr Knight was employed with the applicant from 1995 to 2009 and is well experienced in the research and development of security document features. From 2010, he provided consultancy services in respect of technical and intellectual property issues relating to security documents (including bank notes) and their components. He has been listed as an inventor/co-inventor on 11 patents relating to security document features and manufacturing techniques. The first Knight declaration relies on exhibits MK-1 to MK-4.
I will provide the details of what is contained in the evidence, and the details of parties’ submissions, where relevant, later in my decision.
Decision
Onus of Proof
The examination request for this patent application was filed on 13 March 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 application. This includes the amendment to subsection 60 (3A) that allows the Commissioner to refuse a patent application if satisfied on the balance of probabilities that a ground of opposition exists.
Consequently the former standard for opposition proceedings applies and the opponent must establish that it is clear or practically certain that the patent is invalid (F Hoffman La Roche AG v New England Biolabs Inc [2000] FCA 283 at [29], [67]; [2000] FCA 283; 50 IPR 305 at 311, 319; Commissioner of Patents v Sherman [2008] FCAFC 182 at [18], [22]; [2008] FCAFC 182; 79 IPR 426; Genetics Institute Inc v Kirin-Amgen Inc [1999] FCA 742; [1999] 92 FCR 106 at [17]).
Novelty
Law Relating to Novelty
Section 7 of the Patent Act 1990 provides that
(2) For the purpose of this Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any of the following kinds of information, each of which must be considered separately:
(a) prior art information (other than mentioned in paragraph (c)) made publicly available in a single document or through doing a single Act;
(b) prior art information (other than mentioned in paragraph (c)) made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art would treat them as a single source of that information;
(c) prior art information contained in a single specification of the kind mentioned in subparagraph (b)(ii) of the definition of prior art base in Schedule 1.
The test for novelty has been discussed in the Full Federal Court decisions of Pfizer Overseas Pharmaceuticals v Eli Lilly and Company [ 2005] FCAFC 224 and Bristol-Myers Squibb Company v FH Faulding & Co Limited (2000) 97 FCR 524. As noted in both the decisions, the basic test for novelty is the "reverse infringement test" as set out in Meyers Taylor Pty Ltd v Vicarr Industries (1977) 137 CLR 228 at page 235 where Aickin J stated:
“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 invention would, if the patent were valid, constitute an infringement.”
Infringement is said to occur where "each and every one of the essential features of that claim have been taken" (Rodi and Wienenberger AG v Henry Showell Ltd (1969) RPC 367). However, as Pfizer (supra) noted, it is not sufficient for a citation to contain all the essential features of the claim, there must be "clear and unmistakable" directions to the claimed invention. In addition, to deprive a claim of its novelty, a citation must be the same as the claimed invention for the purposes of "practical utility". In other words, the citation has to "enable" the skilled worker to produce the invention from the written disclosure.
Lack of novelty can however be found where a feature is not explicitly mentioned but nonetheless present as an inherent feature because of an inevitable result of the disclosure. As noted in English Court of Appeal in The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Ltd at page 486:
“if in carrying out the directions contained in a prior inventor's publication will inevitably result in something being made or done which, if the claim of the opposed specification were a claim of a valid patent, would constitute an infringement of that claim, then that claim would have been anticipated.”
Novelty Determination in the Current Case
US 2008/0309063 A1 (“D1”, Exhibit BAH-5), AU 2008314093 (D6, Exhibit BAH-11) published as WO 2009/049866 A1 (BAH-10) and US 4892336 (D8, Exhibit BAH-3) were raised by the opponent as relevant to the novelty of the claims even though only D1 was listed in the statement of grounds and particulars. However all three documents were discussed in the evidence in support and the evidence in answer.
The opposed specification concerns a security device comprising at least two lenticular devices, each lenticular device having an array of elongate lenticular focusing elements located above respective sets of image strips, wherein the elongate directions in which the lenticular focussing elements of the two lenticular devices extend are orthogonal. The image strips define different views of the respective image portion. As the security device is tilted about an axis parallel to the elongate direction of either of the lenticular devices, the respective image portion appears to move laterally while the other image portion remains stationary. The security device may be used in different applications, for example by attachment to objects of value. Preferably, the security device is adhered to or substantially contained within a security document.
The opponent made detailed submissions in respect of the novelty of the claims in light of D1, D6 and D8. Firstly I will examine the opponent’s submissions in regard to the features of claim 1 as follows:
(a) a security device comprising at least two lenticular devices;
(b)each lenticular device having an array of elongate lenticular focusing elements located above respective sets of image strips wherein the elongate directions in which the lenticular focussing elements of the two lenticular devices extend are orthogonal;
(c)the two lenticular devices, when viewed at at least one viewing condition, for example perpendicularly, present a recognisable image to the naked eye of the observer made up by image portions from each lenticular device;
(d)the image strips define different views of the respective image portion whereby as the security device is tilted about an axis parallel to the elongate direction of either of the lenticular devices, the respective image portion appears to move laterally while the other image portion remains stationary.
US 2008/0309063 A1 (D1)
The prior art document D1 discloses a method of producing a micro-refraction image which is particularly suitable for use in a certificate of authenticity. The document describes that the refraction images are known and comprise a periodic line pattern applied on a substrate and a structure of cylindrical lens parallel to the lines of the line pattern. Depending on the viewing angle under which the periodic line pattern is observed through the lens structure, different lines are visible in each period of the line pattern, which together provide the image perceived. By configuring the line pattern, various optical effects can be achieved as a result of which the viewer perceives different image contents at different viewing angles. The effect dependent on the viewing angle can consist in a change in colour, a change in shape or a combination of change in colour and shape. One of the particularities of the invention is the extraordinary fineness of the line pattern and the structure of cylindrical lenses.
In respect of features (a) and (b), the opponent submitted that D1 discloses optical effects that can be achieved with the configurations of at least two lens structures as shown in Fig. 6. Further Figs. 6(a)-(c) of the document disclose line patterns rotated against each other by 90° and with such lens structures which must be aligned to underlying line patterns, D1 discloses orthogonal lenticular devices. Regarding feature (c), the opponent referred to three forms of micro-refraction images that are presented to the viewer in Fig.1 when the viewing angle is changed from the situation shown at 10a to the situation shown at 10b. Regarding feature (d), the opponent referred to para [0046] of D1 which states that “with such lens structures, which must be adjusted to the underlying line patterns, different optical effects are obtained when the refraction image is swivelled about different axes or the viewing angle is changed in different planes” and stated that according to Dr Hardwick when the device shown any one of the Figs. 6(b), 6(c) and 6(e) and 7 of D1 is tilted about an axis that is parallel to elongate direction of one of the lens structures, the respective image portion will appear to move laterally while the other image portion will remain stationary.
While agreeing that the device shown in Fig. 6 of D1 comprises two lenticular devices each having an array of elongate lenticular focusing elements which are orthogonal to each other, the applicant submitted that the arrangement and nature of the image strips beneath the arrays in Fig. 6 are not described at all, and certainly not described as providing for separate parts of the one recognisable image, at least one of the parts moving from one point to another when the device is tilted. The applicant also submitted that the opponent improperly seeks to combine the disclosures of Fig. 1 with Fig. 6 in order to arrive at the claimed invention, but even that falls short given the lack of part of an image which moves as opposed to simply changing as described in Fig. 1. Referring to the text at para [0046] of D1, Dr Knight stated that there is no explanation in D1 of what these effects are, or of what image or images would be presented to the observer.
It is apparent that D1 describes a device with two lenticular structures where the focussing elements of the two structures are orthogonal to each other and a recognisable image is presented to the viewer when the two lenticular devices are viewed at at least one viewing condition. However there is no disclosure of the movement of image when the device is tilted about an axis parallel to the direction of either of orthogonal lenticular devices. While the document describes that different optical effects are obtained when the refraction image is swivelled about different axes or the viewing angle is changed in different planes, there are no clear and unmistakable directions to the feature of the image strips defining different views of the respective image portion whereby as the security device is tilted about an axis parallel to the elongate direction of either of the lenticular devices, the respective image portion moving laterally while the other image portion remains stationary as defined in claim 1.
In view of the above, I find that claim 1 of the opposed specification is novel light of D1. The subject matter of method claim 18 is similar to that of claim 1, and the remaining claims of the opposed specification are appended to either claim 1 or claim 18, therefore claims 2-21 are also novel in light of D1.
WO 2009/049866 A1 (D6)
The prior art document D6 concerns a multilayer body comprising a transparent first layer having a multiplicity of lenses and a second layer having a multiplicity of microscopic structure arranged beneath the first layer in a fixed position relative to the first layer. The invention provides a three dimensional optical appearance to a human viewer, which exhibits an easily remembered motion effect when the multilayer body is tilted or viewed from a changing viewing direction. Thus the multilayer body generates an optically variable effect which can be used as an optical security feature for security documents such as banknotes or credit cards.
Regarding feature (a), the opponent submitted that D6 describes a first and a second subregion of lenses which provide adjacent representations that move at different speeds or in different directions upon being tilted. Regarding features (b)-(d), the opponent submitted that D6 describes a first subregion of the region and a second subregion of the region arranged beside the first subregion wherein the respective micro-image grids have a phase displacement relative to each other including a different angle and/or a different focal length. They argued that D6 thus includes an embodiment where the micro-lens grid of one subregion is at an angle to the micro-lens grid of the other subregion, including a 90° angle.
Referring to the opponent’s submissions, the applicant stated that D6 discloses two sub-regions which provide adjacent representations moving at different speeds or directions upon being tilted and therefore this disclosure explicitly teaches away from the claimed invention because each representation will move upon tilting, not that one will remain stationary as required in claim 1. Disagreeing with the opponent, the applicant also submitted that there is no express disclosure of micro-lens grid of one subregion at 90° angle to the micro-lens grid of the other subregion.
Having considered the document as a whole, it is clear to me that D6 does not disclose orthogonal lenticular focussing elements. Furthermore there is no disclosure of the feature that image strips define different views of the respective image portion whereby as the security device is tilted about an axis parallel to the elongate direction of either of the lenticular devices, the respective image portion appears to move laterally while the other image portion remains stationary. On the contrary, the adjacent representations move at different speed or directions when the security device is tilted. In view of the above, I find that claim 1 of the opposed specification is novel light of D6.
The subject matter of method claim 18 is similar to that of claim 1, and the remaining claims of the opposed specification are appended to either claim 1 or claim 18, therefore claims 2-21 are also novel in light of D2.
US 4892336 (D8)
The prior art document D8 relates to an anti-falsification document such as a bank note or a security paper having an embedded security thread. In an embodiment, the security thread is made of a transparent material having one surface impressed with a relief structure in the form of a plurality of cylindrical lenses disposed parallel to each other. The other surface of the thread is provided with a printed pattern composed of a plurality of coloured individual stripes. The thread changes its colour when the document is slightly tilted and the viewing angle changes. In another embodiment, a ring is printed on the other surface of the thread at recurrent distances in correlation with the cylindrical lenses in such a way that the ring appears to be moving from a first position to a second position on the thread when the viewing angle changes. The viewer is thus given the impression of a moving image.
Regarding features (a) and (b), the opponent submitted that D8 describes a plurality of cylindrical lenses impressed on a surface of the security thread which may extend lengthwise or crosswise to the direction of the thread, and that where the security device of D8 comprises a thread with a first array of lenses that extend lengthwise to the direction of the thread and a thread with a second array of lenses that extend crosswise to the direction of the thread, it discloses the first array extending in a direction orthogonal to the second array. Regarding features (c) and (d), the opponent referred to column 5 lines 22 to 45 of D8 where it has been described that it is just as possible to use the tilt image effect on cross-striped security threads, as to use the moving image effect in the case of threads with lengthwise striping and that it is also conceivable to combine the two effects on one security thread.
Disagreeing with the opponent, the applicant submitted that D8 does not suggest cylindrical lenses extending lengthwise and crosswise to the direction of the thread at the same time. They stated that the text at column 5, lines 22 to 45 of D8 as quoted by the opponent only suggests the combined use of the “tilt image effect” and the “moving image effect” on a single set of parallel image strips, not the combination of orthogonal lenticular devices. That is, the passage describes the combining of effects and not of the two different orientations of cylindrical lenses on a single security thread. The applicant argued that D8 only suggests that a single orientation of parallel cylindrical lenses could provide both visual effects to a viewer, for example, a ring that moves and changes colour as the thread is tilted.
I agree with the applicant that D8 discloses the cylindrical lenses extending in either lengthwise or crosswise to the direction of thread but not a combination of the orthogonal lenticular devices. Reading the specification as a whole, it is also apparent to me that D8 discloses combining the tilt and the moving image effects independent of whether the cylindrical lenses are parallel or orthogonal to the thread direction. Therefore, I find that claim 1 is novel in light of D8.
The subject matter of method claim 18 is similar to that of claim 1, and the remaining claims of the opposed specification are appended to either claim 1 or claim 18, therefore claims 2-21 are also novel in light of D2.
The opposition fails on this ground of opposition.
Inventive Step
Law Relating to Inventive Step
Section 7 of the Patent Act 1990 at the relevant date provides that:
(2) For the purpose of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).
(3) The information for the purposes of subsection (2) is:
(a) any single piece of prior art information; or
(b) a combination of any 2 or more pieces of prior art information;
being information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded as relevant and, in the case of information mentioned in paragraph (b), combined as mentioned in that paragraph.
The High Court in Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59 confirmed that “obvious” means “very plain” as stated in General Tire (supra) where it was said:
"'Obvious' is, after all, a much-used word and it does not seem to [us] that there is any need to go beyond the primary dictionary meaning of 'very plain'.”
A person skilled in the art is a non-inventive worker who is not overly qualified and has a practical interest in the subject matter of the invention. In Root Quality Pty Ltd v Root Control Technologies Pty Ltd (2000) 49 IPR 225 at 241-242, Finkelstein J stated:
"Generally speaking the skilled addressee is the person who works in the art or science with which the invention is connected.”
While inventiveness requires more than novelty, even a "scintilla of inventiveness" is sufficient and a step, if otherwise inventive, does not lose its inventiveness because the idea, once conceived, is very simple to put into effect (Winner v Ammar Holdings Pty Ltd 25 IPR 273). The test is objective, so that it is irrelevant whether the invention was a matter of chance or the result of long experimentation and much effort (Winner v Ammar (supra) at 294).
Common General Knowledge
As a precursor to any inventive step consideration, the state of the common general knowledge in the art has to be established. The common general knowledge is the background knowledge attributable to the person skilled in the art. A widely accepted definition of common general knowledge is that provided by Aickin J in Minnesota Mining and Manufacturing Company and Another v Beiersdorf (Australia) Limited 144 CLR 253 at 292:
"The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge.”
The state of the common general knowledge is a question of fact which must, in general, be determined on the basis of evidence from persons whose background enables them to testify authoritatively as to the common general knowledge in the particular art.
Approach Used to Assess Inventive Step
There are a number of approaches which the courts have used to assess inventive step. In Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd (1981) 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 Hassle (supra) referred with approval to this approach and further held:
"That way of approaching the matter has an affinity with the reformulation of the `Cripps question' by Graham J in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd (1970) RPC 157. This court had been referred to Olin in the argument in Wellcome Foundation. Graham J had posed the question:
`Would the notional research group at the relevant date in all the circumstances which includes a knowledge of all the relevant prior art and of the facts of the nature and success of [compound], directly be led as a matter of course to try [the claimed invention] in the expectation that it might well produce [the desired result]?'
That approach should be accepted."
Inventive Step Determination in the Current Case
During the hearing, the opponent relied on the same documents as for novelty (D1, D6 and D8) in support of their opposition under this ground of opposition.
Before determining the inventive step of the claimed invention, I will first determine the “problem to be solved”. I will also identify the person skilled in the art and the common general knowledge of that person at the priority date of the claims of the opposed specification. If required, I will also determine whether the prior art documents D1, D6 and D8 could reasonably be expected to have been ascertained, understood and regarded as relevant by the skilled addressee.
Problem to be solved
None of the parties provided any substantive submissions on the problem solved by the claimed invention.
The opposed specification states that the prior art device is difficult to verify by an untrained observer and that it is desired to provide a security device that alleviates one or more difficulties of the prior art, or to at least provide a useful alternative. In view of this, I conclude that the invention provides an alternate security device which is relatively easier to verify by an untrained observer.
The person skilled in the art
The opponent submitted that a skilled addressee working in this area would have a higher level science or engineering qualification, or practical experience working with optical security devices. They stated that Dr Hardwick is representative of the skilled person in the art.
The applicant submitted that the skilled addressee 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 attendance at conferences, review of textbooks and published papers.
The applicant added that Dr Hardwick, the opponent’s witness, is plainly inventive and has attributes that are not typical of the non-inventive worker in the field. They submitted that having regard to Dr Knight’s education and experience, he is more representative of the skilled addressee though he is also inventive, and that to the extent there is any dispute as to the obviousness of a particular invention, Dr Knight’s evidence should be preferred to that of Dr Hardwick.
Ultimately, I do not have to decide one way or the other regarding their testimonies since the outcome of my decision does not change.
The common general knowledge in the art
The opponent submitted that Dr Hardwick was aware of several published patent specifications on lenticular devices and the types of lenses that were available and used as optical security devices at the priority date of the claimed invention which include spherical, part spherical and elongate cylindrical lens structures.
The opponent further submitted that it was common general knowledge that elongate lenticular devices could be arranged to result in a moving image effect i.e. when the device is tilted about an axis parallel to the elongate direction of the lenticular device, the image defined by the lenticular device moves laterally. They argued that it consequentially follows that when the device is tilted about an axis perpendicular to the elongate direction of the lenticular device, there would be no observable change in optical effect. The opponent also submitted that the use of elongate lenses have been described in the Optical Security Document books by van Renesse (Exhibit BAH-8 and Exhibit BAH-9) published well before the priority date of the opposed specification. Dr Hardwick, the opponent’s witness, noted that the optical effect from cylindrical lenses is more constrained than spherical lenses and is unidirectional in the sense that an optical effect, such as a moving image effect, would be observable when the cylindrical lenses are tilted about an axis parallel to the lenses.
The applicant did not accept the opponent’s submissions as to what constituted common general knowledge and instead referred to the first Knight declaration which states that lenticular devices were known primarily in the novelty card industry.
Based on the declarations before me, I am of the view that the following were common general knowledge in the art in Australia before the priority date of the claims of the opposed specification:
1.Optical security devices comprising an array of elongate lenticular focussing elements
2.Focussing element located above respective set of image strips
3.Cylindrical lenses positioned above respective image portions, to create a moving image effect
4.Arranging two optical security devices in close proximity
D1, D6 and D8 ascertained, understood and regarded as relevant by the skilled addressee
The opponent submitted that each of D1, D6 and D8 was clearly a part of a document that a skilled addressee would be likely to ascertain, understand and regard as relevant. The applicant did not comment on the above documents but stated that they did not accept that optical security books (Exhibit BAH-8 and Exhibit BAH-9) were common general knowledge in the art.
I will proceed on the basis that a skilled person could reasonably be expected to ascertain, understand and regard D1, D6 and D8 as relevant.
I have already concluded that optical security devices comprising an array of elongate lenticular focussing elements were common general knowledge in the art before the priority date of the claimed invention. Therefore the question whether the skilled addressee could reasonably be expected to have ascertained, understood and regarded the optical security books (Exhibit BAH-8 and Exhibit BAH-9) as relevant is moot.
Inventive step in light of the prior art documents
D8 combined with common general knowledge
The opponent submitted that to the extent that the claims are considered to be novel over D8 because D8 does not disclose a security device where “the elongate directions in which the lenticular focusing elements of the two lenticular devices extend are orthogonal”, the difference would have been obvious to the skilled addressee in view of the problem that the opposed specification seeks to solve.
The opponent argued that when the security device in D8 is turned about an axis parallel to the cylindrical lenses, a motive moves almost continuously from one place on the security thread to another thereby resulting in the moving image effect, and that if the same device is tilted about an axis perpendicular to the cylindrical lenses, there would be no observable optical effect as demonstrated by Dr Hardwick in Exhibit BAH-4. The opponent put the view that the problem identified by the opposed specification can be readily solved by a lenticular arrangement that is not unidirectional to provide an observable optical effect regardless of the axes in which the device is tilted, and that this can be achieved by an orthogonal arrangement of the elongate lenses.
The applicant submitted that neither D8 teaches two arrays of lenticular lenses that are orthogonal nor there is a particular problem with the device in D8 being uni-directional. They argued that Dr Hardwick’s analysis is plainly infected by hindsight and that just because elements of a combination might be obvious, it does not make the combination itself obvious.
As discussed under novelty, I have found that D8 does not disclose a security device having two orthogonal lenticular devices. While suggesting that this difference would be obvious to the skilled addressee, the opponent has not explained steps that the skilled addressee may have taken to arrive at the claimed invention in light of prior art document D8. Although optical security devices comprising an array of elongate lenticular focussing elements and cylindrical lenses positioned above respective image portions to create a moving image effect were common general knowledge in the art, and the inclusion of orthogonal lenses would have presented little challenge to the skilled addressee, there is no evidence before me suggesting that the skilled addressee would have been directly led to providing orthogonal lenses while seeking to provide a security device which was relatively easier to verify by an untrained observer. I consider that there is insufficient evidence to establish that claim 1 is obvious.
I find that claim 1 is inventive. The subject matter of method claim 18 is similar to that of claim 1, and the remaining claims of the opposed specification are appended to either claim 1 or claim 18, therefore claims 2-21 are also inventive in light of D8.
D1 or D6 combined with common general knowledge
The opponent did not make any submissions in respect of inventive step of independent claim 1 in light of either D1 or D6 except stating that the subject matter of the claim does not involve an inventive step in view of their comments on the novelty of the claim.
I have found under novelty that claim 1 is novel in light of D1 because the document does not disclose the feature of image strips defining different views of the respective image portions whereby as the security device is tilted about an axis parallel to the elongate direction of either of the lenticular devices, the respective image portion appears to move laterally while the other image portion remains stationary.
I have also found under novelty that claim 1 is novel in light of D6, because the document does not disclose orthogonal lenticular focussing elements. Furthermore there is no disclosure in D6 of the feature that image strips define different views of the respective image portion whereby as the security device is tilted about an axis parallel to the elongate direction of either of the lenticular devices, the respective image portion appears to move laterally while the other image portion remains stationary.
Once again there is no evidence before me suggesting that these differences would be obvious to the skilled addressee. The opponent has not explained steps that the skilled addressee would have taken to arrive at the claimed invention in light of either D1 or D6 while seeking to provide a security device which was relatively easier to verify by an untrained observer. There is no evidence to establish that claim 1 is obvious in light of either D1 or D6.
I find that claim 1 is inventive. The subject matter of method claim 18 is similar to that of claim 1, and the remaining claims of the opposed specification are appended to either claim 1 or claim 18, therefore claims 2-21 are also inventive in light of D1 or D6.
The opposition fails on this ground of opposition.
Manner of Manufacture
The opponent submitted that the claimed invention is directed to a collocation of known integers and is, therefore, not a manner of manufacture.
Regarding claim 1, the opponent put the view that the claimed invention relates to a placement of two known lenticular arrays orthogonally to each other wherein the resulting optical effect is no more than the expected optical effect from each lenticular array, and that there is no working interrelationship or a potential working interrelationship between the component integers. Each of the orthogonally positioned lenticular arrays performs its own proper function independently of each other and is, therefore, not a patentable combination.
The invention provides a security device with an optical effect which is relatively easier to verify by an untrained observer. It comprises of two orthogonal lenticular devices wherein different views of the respective image portions are presented to the observer when the security device is tilted about an axis parallel to the elongate direction of one of the orthogonal lenticular devices. Regardless of the lenticular device about which the security device is tilted, the image presented to the user is made up of image portions from each lenticular device thus providing a clear working interrelationship between the integers of the claimed invention.
I conclude that the claims are for a manner of manufacture.
Utility
The issue of utility was recently considered by the Full Court of the Federal Court in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70 where Emmett J at 81 stated:
“A claim is bad if it covers means that will not produce the desired result, even if a skilled person would know which means to avoid. That is to say, everything that is within the scope of a claim must be useful, otherwise the claim will fail for inutility.”
The opponent submitted that claim 12 does not define a useful invention. They argued that while claim 1 recites that the array of elongate lenticular focusing elements is located above the respective sets of image strips, claim 12 (which depends on claim 1) recites that the lenticular focusing elements comprise micro-mirrors, and it is not clear how the image strips would be visible when reflective micro-mirrors are arranged above the image strips as required in claim 1. The opponent asserted that the claimed invention would not work in this arrangement and accordingly would not be useful.
The applicant submitted that the opponent is seeking to read the claim in a way which would not work when another possible interpretation which does work is available. The first Knight declaration states that there is no requirement in the claims that the observer must view the recognisable image from above the image strips, and in that way the micro-mirrors may be above the image strips and the observer underneath such that the security device will work.
Given the applicant’s construction of claim 12, I accept that the claimed invention is useful.
Section 40 Matters
Sufficiency, Clarity and Succinctness
The opponent raised several aspects of sufficiency, non-succinctness and clarity in respect of various claims. I cannot see any merit in the opponent’s arguments regarding any of the issues raised when the specification is read a whole and the claims are construed in light of the established rules of construction. Although Dr Hardwick mentions some of these issues, I note that he had no major difficulty either with the description or the claims. All matters are easily resolved when the specification is considered as a whole. I consider that there is no basis for the opponent’s objections in any of the above matters and find that the opposed specification described the invention fully and the claims are clear and succinct.
Conclusion
The opponent does not succeed on any of the grounds of opposition.
Subject to appeal, I direct that the application proceed to grant.
Costs
The award of costs is a discretionary matter. It is a general principle in matters such as these that costs follow the event, and I see no reason to depart from this practice. I have found that the opponent has been unsuccessful in all respects. I therefore award costs in accordance with Schedule 8 against the opponent.
Dr S. K. Aggarwal
Delegate of the Commissioner of Patents
0
9
0