Innovia Security Pty Ltd v De La Rue International Limited
[2016] APO 5
•11 February 2016
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Innovia Security Pty Ltd v De La Rue International Limited [2016] APO 5
Patent Application: 2010252791
Title:Security devices for security documents
Patent Applicant: De La Rue International Limited
Opponent: Innovia Security Pty Ltd
Delegate: Dr N.R. Madsen
Decision Date: 11 February 2016
Hearing Date: 25 November 2015, in Melbourne
Catchwords: PATENTS – optical security device that emits visible light upon stimulation with non-visible light – section 59 – opposition to grant of a patent – clarity, novelty, inventive step – claims are clear – claims are novel – claims are inventive – costs apportioned as a result of amendments filed during opposition
Representation: Patent applicant: Tom Cordiner of counsel
Opponent: Watermark Patent and Trademark Attorneys
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2010252791
Title:Security devices for security documents
Patent Applicant: De La Rue International Limited
Date of Decision: 11 February 2016
DECISION
The opposition is unsuccessful.
I award cost in accordance with Schedule 8 of the Patent Regulations against the applicant up to, and including, the date of advertisement of allowance of the amendment and award costs against the opponent thereafter.
DECISION
Background
This matter relates to patent application 2010252791 in the name of De La Rue International Limited (the applicant), filed on 26 May 2010. The application claims priority from United Kingdom patent application number 0909215.6 and claims an earliest priority date of 28 May 2009.
The application was advertised as accepted on 23 January 2014. A notice of opposition to grant of a patent was filed on 23 April 2014 by Innovia Security Pty Ltd (the opponent). This notice was followed by a statement of grounds and particulars on 23 July 2014. Before the completion of the period provided for the opponent to file evidence in support, the opponent filed a request to amend the statement of grounds and particulars after receiving a direction to provide further and better particulars. The opponent filed evidence in support and the applicant filed evidence in answer. On 10 March 2015 the applicant filed a request to amend the specification which was subsequently allowed on 9 July 2015. Following this the opponent again amended the statement of grounds and particulars, and this statement was allowed on 26 August 2015 and forms the basis for this opposition. There was no evidence in reply filed by the opponent.
The opponent appeared at the hearing by way of written submissions while the applicant was represented by counsel. The grounds pressed by the opponent in their written submission were that the claimed invention was not clear, novel or inventive.
The request for examination of the patent application was filed on 25 October 2011. As a consequence, substantive amendments of the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 that came into effect on 15 April 2013 do not apply to the present patent 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. Further to this point I note that the law that applies to the present grounds of opposition is that prior to amendment by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012.
Onus
It is well established under the previous legislation that in proceedings such as these before the Commissioner, the onus rests with the opponent to clearly establish its case in reaching a conclusion on any issue. In F. Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283, Emmett J of the Federal Court found that in opposition proceedings, the Court (and by implication the Commissioner of Patents in her role as a tribunal) should be "clearly satisfied that the patent, if granted, would not be valid". Where questions of fact such as obviousness and existence of invention are involved "the grant should not be refused unless it has been clearly shown that the grounds of opposition have been clearly made out" (Montecatini v Eastman Kodak (1971) 45 ALJR 593).
The Evidence
Evidence consists of:
Evidence in support in the form of a declaration by Dr Bruce Alfred Hardwick dated 22 October 2014 and 30 supporting exhibits (BAH-1 to BAH-30)
Evidence in answer in the form of a declaration by Mr Daniel John Reid dated 23 January 2014 (Clearly this is intended to read 23 January 2015) and 4 supporting exhibits (DJR-1 to DJR-4)
The Specification
The invention described in the specification relates to security devices for use in security documents such as banknotes, passports, identification cards and the like. These documents can be susceptible to copying or counterfeiting and as such there is an ever present need to improve security features to protect against these issues. A range of optical effects have been arranged in such devices providing this protection including the use of watermarks, embedded threads and fluorescent pigments. (page 1, lines 9-24)
Of particular relevance to the present invention is the inclusion of fluorescent materials which emit a visible colour when stimulated with ultraviolet (UV) light. The use of such an effect is found in “teller-assist” type security features wherein the feature is often viewed using a simple hand held light source. In prior art examples, an image is created by gaps in an opaque layer wherein the image is visible in transmitted light or on exposure to UV light. In these examples zones are provided which fluoresce in two or more colours from exposure to UV light. According to the specification a problem with these devices is that in order to achieve multiple coloured fluorescing zones, fluorescent material is applied to opaque materials. Often the opaque material is metallic which can result in an undesirable sheen. Alternatively if sheen is desired, the application of fluorescent material to the metallic layer can result in an undesirable reduction in sheen. These problems can be exacerbated by the use of pigmented layers as the fluorescent material. However such pigment layers are desirable to use because they provide benefits such as superior lightfastness. (page 4, lines 5-16)
The specification continues to discuss that there is a continual need to find alternative security features that are difficult to counterfeit and in particular, teller-assist features that are easy to recognise under certain conditions (page 4, lines 18-20). Figure 2 exemplifies a security device aimed at overcoming the described problems.
Figure 2 shows a security device comprising a spacer layer 11 which is substantially transparent and of a thickness in the micron range. Applied to both surfaces of the layer are layers of ink 16 with gaps forming a window 19. Within this window are striped indicia 12, 13 which are in registration with absorbing regions 14. Gaps 17 and 18 are between the indicia and absorbing regions respectively to allow the transmission of light. In this embodiment, the indicia are formed from inks/materials that are excitable by UV light to emit visible light. The absorbing regions absorb UV light but transmit visible light. Due to the fact that UV light can pass through gap 18 and not element 14, the structure described in figure 2 enables selective excitation and visibility of indicia 12, 13 depending on the orientation of a UV light source with respect to the device.
To view the UV excitable security feature described in the above embodiment a teller will arrange a UV light source above the device and at an angle to the perpendicular such that UV light travels through the gaps 18 and strikes at least one of the excitable indicia 12, 13. UV light not travelling through gaps 18 is absorbed by elements 14. Indicia 12 and/or 13 will emit visible radiation which will travel through elements 14 which are transmissive to visible radiation. As the light source is moved it will selectively excite indicia 12 and/or 13 resulting in an optically variable effect that is difficult to reproduce.
The claims
The specification as amended during the opposition proceedings ends in 27 claims whereby claim 1 is independent as follows:
A security device comprising at least one at least partially light transmitting spacer layer, on one side of which are formed first indicia, said first indicia comprising a plurality of repeating elements forming a first pattern and being formed from a material which emits a coloured visible light when excited by a form of non-visible radiation, and on an opposing side of the spacer layer is an absorbing material, which absorbs the said radiation but transmits visible light, the absorbing material being applied in a second pattern similar to the first pattern and comprising a plurality of repeating elements and having gaps between the elements, wherein the radiation is able to pass through said gaps and the spacer layer to excite the material forming the first indicia, but cannot pass through the elements of the absorbing material.
Claim Construction and Clarity
While the rules of construction for an Australian patent specification are well summarized in Decor Corp v Dart Industries 13 IPR 385, the correct application of these rules to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70; 81 IPR 228 at [118] – [120]:
"the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear ... while the claims define the monopoly claimed in the words of the patentee's choosing, the specification should be read as a whole ... it is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification ... terms in the claim which are unclear may be defined or clarified by reference to the body of the specification."
I also note that the requirement that the claims are clear is understood to be satisfied if a person could ascertain "whether or not what he proposes to do falls within the ambit of the claim" (Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59).
The opponent raised objections as to a lack of clarity in regard to a number of claims. Also important to construction of the claims is the scope of the term “similar” in claim 1.
Claim 1: “similar”
The Macquarie Dictionary (The Macquarie Dictionary, 6th ed. 2013, from defines the word similar as follows:
“…having likeness or resemblance, especially in a general way.”
The opponent generally submitted that the extent to which the patterns are ‘similar’ is unclear particularly in view of dependent claims 4, 7 and 8. They suggest that these dependent claims imply that a first pattern of first indicia is not the same as, or different to, a second pattern. On this basis I understand the opponent points to an inconsistency leading to a lack of clarity in the sense that they argue that ‘different’ is inconsistent with ‘similar’.
With the dictionary definition in mind I see no basis for the issue raised by the opponent. ‘Similar’ means having likeness or resemblance, and particularly this may be a general likeness or resemblance. The definition of the term clearly encompasses difference. In the context of the present claim the manifestation of similarity in the presence of difference is well represented in examples provided in the specification involving patterns having generally geometrical resemblance, but at the same time different dimensions. As the applicant explains in their submissions:
“The idea of “similarity” of pattern here simply means that the patterns will have a resemblance in appearance, without being identical. Indeed, the pattern created by the absorbing material must have “gaps between the [repeating] elements” which is not something required of the first indicia. Similarity here also plainly contemplates something which has a similar pattern but at differing widths of elements given claims 7 and 8 provide a narrowing in that regard. A pattern can be similar but of different widths.”
Claim 1: “visible light” and “said radiation”
The opponent submitted that:
“…it is not clear whether the 'visible light' in the phrase 'absorbing material, which absorbs the said radiation but transmits visible light' is the same coloured visible light that is emitted from the first indicia or is visible light from another source.”
Firstly, I see no basis to consider that the term “said radiation” refers to anything other than the feature defined earlier in the claim relating to excitation by a form of non-visible radiation. There is no other prior reference in the claim using the term “radiation”.
In regard to the claimed “visible light” being potentially light emitted from the first indicia or visible light from another source I see no issue of clarity. Here the transmission of visible light in the claim refers to a property of the absorbing material. In this sense the absorbing material transmits visible light in some form from a source. This may include coloured visible light emitted from the material of the first pattern; however there is no limitation in the claim that requires the absorbing material to transmit this emitted coloured visible light. In other words, the absorbing material transmits visible light in some range, whereby this range may or may not include the coloured visible light emitted by the material of the first pattern.
Claim 4: “a pair of adjacent elements comprising one from each indicia”
Claim 4 reads:
A security device as claimed in claim 3 in which gaps are provided between a pair of adjacent elements comprising one from each indicia.
Claim 3 to which claim 4 depends reads:
A security device as claimed in claim 1 further comprising second indicia, said second indicia comprising a plurality of repeating elements, the elements of the first indicia alternating with the elements of the second indicia, wherein the colour of light radiated by the first indicia is different from that radiated by the second indicia.
Regarding the feature added by dependent claim 4 the opponent submitted:
“It is not clear what is meant by 'gaps are provided between a pair of adjacent elements comprising one from each indicia'. Are the gaps provided between the elements of the first and second indicia, or are the gaps provided between one group of adjacent first and second indicia and another group of adjacent first and second indicia?”
Turning first to relevant part of claim 3, it is clear that this claim is limited to the inclusion of a plurality of second indicia (eg. item 13) that alternate with the elements of the first indicia (eg. item 12). The applicant submitted that “claim 3 provides that there will, necessarily, be pairs of elements adjacent to each other in a repeating pattern”. I accept the applicant’s characterisation that having elements of the two indicia that alternate with each other means that the elements of the indicia neighbour each other as in the following schematic representation of 1st and 2nd indicia:
| 1st | 2nd | 1st | 2nd | 1st | 2nd | 1st |
Such a representation appears in the specification in the form of embodiments depicted in figures 3a, 3b and 4b, and relates to an arrangement with no gaps between alternating elements.
I now turn to the limitation of claim 4 being that gaps are provided between a pair of adjacent elements comprising one from each indicia. On the face of the claim I can appreciate initial difficultly in construction in that the claim requires plural ‘gaps’ to be provided between a singular ‘pair of adjacent elements’. It follows that the opponent identifies two different possible constructions to claim 4.
Having regard to that disclosed in the body of the specification and in particular depicted in the figures (see for example figure 2 above) it is clear that it is the second construction suggestion by the opponent that is appropriate. The arrangement depicted in figure 2 is the only arrangement described in the specification that considers pairs of first and second adjacent indicia elements and associated gaps. The arrangement clearly shows gaps 17 between adjacent pairs 12,13. While there may be ambiguity on the face of the claim as to where the gaps lie, there is no basis in the specification to provide pairs of adjacent elements comprising one from each indicia, whereby gaps are simply provided between first and second indicia. I construe claim 4 to be limited to gaps between pairs of adjacent first and second indicia elements. In other words a gap is provided between one group of adjacent first and second indicia elements and another group of adjacent first and second indicia elements. The following schematic represents the construction to be applied to claim 4:
| 1st | 2nd | gap | 1st | 2nd | gap | 1st | 2nd | gap |
The opponent also submitted that the construction I have adopted above using the guidance of the figures (see figure 2 and also figures 1a, 1b and 5) would be inconsistent with claim 1 in that claim 4 “implies an arrangement (as shown in figure 1a) where the first pattern formed by the first indicia is different from the second pattern of the absorbing material”. In this regard I reiterate that a pattern may be similar but at the same time different, and as such there is no inconsistency.
Claims 7 and 8: The width of elements
Claims 7 and 8 read:
7. A security device as claimed in claim 1 in which the width of the elements of the absorbing material is equal to a combined width of an element of the first indicia and an adjacent gap.
8. A security device as claimed in any one of claims 3 and 4 in which the width of the elements of the absorbing material is equal to a combined width of an element from each of the indicia
In regard to these claims the opponent submitted that they are not clear:
“…because they compare the width of the elements of the absorbing material to a width of a single element from each indicia… Claim 1 recites that the absorbing material is applied in a second pattern that is similar to the first pattern formed by the first indicia, while claim 7 implies an arrangement (as shown in Figure 3c) where the first pattern formed by the first indicia is different from the second pattern of the absorbing material… Claim 8 is unclear for at least similar reasons that claim 7 is unclear.”
Claim 7 is dependent upon claim 1 which defines first indicia. To me, the claimed limitation simply means that the sum of the widths of an element of the first indicia and a gap adjacent to the first indicia is equal to the width of the elements of the absorbing material. This construction is represented clearly by figure 3c whereby absorbing elements are denoted 14 and first indicia are denoted 12. The gaps are the spaces between first indicia 12. In the figure there is clear basis for the width 14 equalling the width 12 plus the width of an adjacent gap.
The opponent’s difficulty with the claim appears to relate to the fact that a sum of widths of a first indicia and adjacent gap being equal to the width of absorbing elements means that a pattern of first indicia must be different and therefore according to the opponent, not similar to a pattern of absorbing elements. On this point I again refer to my discussion above that patterns can be similar, but at the same time different. I find the claim clear in that while first indicia are provided in a pattern that is similar (eg. geometrically similar) to the pattern of the absorbing material, the dimensions of the patterns are different such that the width of absorbing elements is equal to the sum of widths of a first indicia and its neighbouring gap.
For similar reasons to claim 7 I see no issue with claim 8. Instead of one indicia as claimed in claim 7, a second indicia is provided whereby the sum of widths of an element from each of the two indicia is equal to the width of the absorbing elements. This construction is clearly shown in figure 3a whereby absorbing elements are denoted 14 and two indicia are 12 and 13 respectively.
Claims 12 and 13: The angle of elements to each other
Claims 12 and 13 read:
12. A security device as claimed in any one of the preceding claims in which the elements of the absorbing material are at an angle to the elements of the indicia, the angle lying in the range 0-15°.
13. A security device as claimed in claim 12 in which the angle lies in the range 0-5°.
The opponent submitted that the claims are not clear “because the elements cannot be at an angle to each other unless the elements are stripes”. In response the applicant submitted that:
“Things do not have to be stripes in order for there to be angles between them. It is possible to have, for example, angles between two waves etc.”.
I agree with the applicant and find the claim clear. An angle between elements simply defines a “positional” or “offset” relationship defined by an angle. Such a feature is not unclear.
Claims 26 and 27: Omnibus claims
Claims 26 and 27 are directed towards a security device (claim 26) or security substrate (claim 27), substantially as hereinbefore described with reference to and as shown in the accompanying drawings. The opponent submitted these claims are unclear because there are several different embodiments in these drawings. In response the applicant submitted that these claims in effect are directed to all of the embodiments described and shown in the application.
Omnibus claims of this type should be construed as being limited to the features of the invention identified by the subject of the claim, in their preferred form as described in the specification and drawings. The broadest description of a security device is reflected in claim 1 while the broadest description of a security substrate is simply the security device of claim 1 applied to a base substrate (claim 22). These omnibus claims are thus further limited by the preferred forms of the features defined in claim 1 (and claim 22 for claim 27) as described and depicted in the drawings. I see no issue of clarity with these claims.
Novelty
For the purposes subsection 7(1) of the Patents 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 one of the prior art information.
It is well established that the general test for anticipation is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20]; [1977] HCA 19; 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 of the essential features of the invention as claimed (Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40 at [19]; [1990] FCA 40; 16 IPR 545 at 549). To meet this requirement, the prior art must contain “clear and unmistakable 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).
Regarding the requirement of a clear and unmistakable direction, Australian courts have often cited with approval the words of the UK Court of Appeal in The General Tire case which states at pages 485-486:
"If ... the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee's claim, but would be at least be as likely to be carried out in a way that would not do so, the patentee's claim will not be anticipated…
To anticipate the patentee's claim, the prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented ... A signpost, however clear, upon the road to the patentee's invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee…”
I also note that an alleged anticipation need not explicitly disclose all of the essential features of the claimed invention. In this regard, a disclosure may be implicit as discussed in Bristol-Myers Squibb Company v FH Faulding & Co Ltd [2000] FCA 316; 46 IPR 553 at 576:
“What all authorities contemplate, in our view, is that a prior publication, if it is to destroy novelty, must give a direction or make a recommendation or suggestion which will result, if the skilled reader follows it, in the claimed invention. A direction, recommendation or suggestion may often, of course, be implicit in what is described and commonly the only question may be whether the publication describes with sufficient clarity the claimed invention or, in the case of a combination, each integer of it.”
The following documents were pressed by the opponent in its submissions as depriving the claimed invention of novelty:
· D1: US 2006/0196948 A1 (Weber et al.) 7 September 2006
· D2: AU 734937 B2 (De La Rue International Limited) 5 October 2000
· D3: US 2009/0008458 A1 (Vast et al.) 8 January 2009
Document D1
According to its abstract, document D1 discloses a visible light transmissive card including security indicia that fluoresce under UV light. The card contains at least one infrared (IR) filter. A UV blocking material is provided so that security indicia are clearly visible when the card is exposed to UV light. Regarding the detailed features of claim 1, I will adopt the following numbering breakdown of features provided by the applicant in their submissions to simplify discussion:
1.1A security device
1.2comprising at least one at least partially light transmitting spacer layer
1.3.1 on one side of which are formed first indicia
1.3.2said first indicia comprising a plurality of repeating elements forming a first pattern
1.3.3and being formed from a material which emits a coloured visible light when excited by a form of non-visible radiation
1.4.1and on an opposite side of the spacer layer is an absorbing material, which absorbs the said radiation but transmits visible light
1.4.2the absorbing material being applied in a second pattern similar to the first pattern and
1.4.3comprising a plurality of repeating elements and having gaps between the elements
1.5.1wherein the radiation is able to pass through said gaps and the spacer layer to excite the material forming the first indicia
1.5.2but cannot pass through the elements of the absorbing material
Figures 3 and 4 of document D1 are useful in depicting relevant features.
Figure 3 discloses a visible light transmissive card with a spacer layer defined as the top layer of the card (identified by item 12) providing spacing between security indicia 20 and an IR filter 16a (features 1.1, 1.2, 1.3.1). The security indicia 20 are formed from UV excitable inks printed on the card and which emit visible radiation (paragraph [0024]) (feature 1.3.3). Figure 4 also provides disclosure of a spacer layer similar to the layer of item 12 in figure 3 in the form of relatively thick transparent card stock layers 42b and 44b having an IR filter 46 sandwiched between. Security indicia made of transparent UV excitable inks may be provided on one or both sides of the interfaces of the card stock layers 42c and 44c (paragraph [0033], features 1.1, 1.2, 1.3.1, 1.3.3). In figure 4 layers 42a and 44a are clear protective overlay films (paragraph [0033]). In both figures these security indicia form a first pattern of a plurality of elements.
Regarding the feature 1.3.2 the applicant initially argues that the feature of a repeating first pattern is not present in that only letters AB and CD are illustrated. While this is true the opponent has taken a different approach to an alleged disclosure of the relevant features. Here the opponent points to the disclosure that the IR filter may contain a component that fluoresces under UV light (paragraph [0031]). Figure 6 is relevant to the opponent’s submission.
Paragraph [0049] discusses a patterned layer 60 having the same dimensions as the card, containing a repeating pattern of symbols 62. The symbols constitute windows in a UV blocking material (or blocking portions of a single window) which, in combination with a UV excitable IR filter, can provide secondary security indicia. Such indicia are embodied in paragraph [0049] which discusses the incorporation of patterned layer 60 in the card instead of the security indicia 20 of figure 3. Layer 60 is placed between the IR filter and the front surface of the card 12 (see also figure 7). On this basis the opponent argues that these repeating symbols in combination with the UV excitable IR filter comprise a first pattern of indicia with repeating elements formed on one side of a spacer layer.
Responding, the applicant argues that:
“Whilst Figs 6 and 7 shows repeating symbols 62, paragraph [0049] makes it clear that these are formed by the UV blocking material (i.e. the absorbing material of feature 1.4.2) and these therefore do not provide feature 1.3.2. The fluorescing element of Fig.7 is therefore IR filter 16 which is a continuous surface and it is stated that the original security indicia have been eliminated from this embodiment. If the original security element is still present, it is not said to be of similar pattern to the absorbing layer.”
I am inclined to agree with the applicant that there is no disclosure as required by the claim. Firstly, the repeating symbols of 60 are disclosed to be on one side of a transmitting spacer layer and together with the IR filter form a repeating pattern of first indicia. In this regard a pattern of first indicia suggested by the opponent with reference to figure 6 is not formed from a material which emits via excitation from UV, as required by feature 1.3.3 of the claim. Instead the pattern of first indicia identified by the opponent is formed from the combination of a UV blocking pattern superimposed on a continuous IR filter. Therefore the claim is novel.
For completeness I will also make comment on remaining features of claim 1. Features 1.4.1-1.4.3 relate to the positioning of UV absorbing material and first indicia with respect to the spacer layer, and the fact that the absorbing material is applied in a pattern having gaps that is similar to the first indicia. In regard to these features the opponent again provides discussion of the disclosed UV blocking layer between the security indicia 20 and the IR filter containing a UV fluorescing component (figure 3 and paragraph [0038]). In such an approach, the UV blocking layer may be added at the interface between the card stock layer 42b and the IR filter 46 (paragraph [0040]). The blocking layer may be absorbing, scattering and/or reflecting (paragraph [0038]) and can be applied in patterned fashion for use as secondary security indicia in combination with the fluorescing IR filter (paragraph [0046]).
As above the card stock layer 42b can be considered to be a spacer layer. In this regard, there is disclosure of first patterned indicia on one side of the spacer layer (at 42c) and UV absorbing material on the opposing side (at the interface of 42b and 46). The pattern of absorbing elements is clearly repeating and has gaps between elements as it can be produced as either a positive or negative pattern (paragraph [0049]) in accordance with figure 6. Importantly the patterns of the first indicia (item 20) are not described as having any particular likeness or resemblance to the pattern of absorbing elements. It follows that there is no disclosure in D1 of the application of first indicia and absorbing elements in a manner such that their patterns are similar.
Finally, features 1.5.1 and 1.5.2 relate to the way in which non-visible excitation radiation passes through gaps in the absorbing material to thereby excite the elements of the first indicia. Similarly to that pointed out by the applicant at the hearing, I note that document D1 only discusses UV light impinging upon the top of the card as per item 22 of figure 3. While the specification discusses visible light impinging upon and being transmitted through the card from beneath (figure 1), there is no disclosure to suggest that UV light can pass through the IR filter such that radiation can pass through gaps in UV blocking material to subsequently reach the first security elements 20.
Therefore I find claim 1 novel in view of document D1. The document fails to disclose repeating first indicia at the same time as a pattern of first indicia being similar to a pattern of absorbing material. There is also no disclosure of non-visible radiation passing through gaps between absorbing elements to excite first indicia elements. Claims 2-27 add further features to those defined in claim 1 and are therefore also novel in view of document D1.
Document D2
This document discloses various arrangements producing a security device comprising a transparent substrate and viewing region. Within the viewing region are provided first indicia on one side of the substrate and second indicia on the other side of the substrate. Depending upon the viewing direction and the orientation of a light source, first indicia and second indicia may coincide such that certain indicia are obscured or may combine such that together they produce an optical effect. For the purpose of assessing novelty I will again use the notation for features introduced above.
Figures 5 and 10 of document D2 are useful in depicting relevant features.
From page 4, document D2 discusses embodiment of the described invention in the form of a security device with a transparent substrate having first and second indicia on either side. The indicia are spatially overlapping such that viewing the substrate from one side under transmitted radiation for example, means that first indicia obscure the second indicia at a particular angle (page 4, paragraph 2). When the angle is changed, second indicia become visible due to a parallax effect (page 4, paragraph 3). Indicia can be formed from dots (page 4 paragraph 2) or parallel lines (page 5 paragraph 2) and in different colours (page 5, paragraph 6). Figure 10 shows indicia 20 and 21 which are placed on opposite sides of a transparent substrate. The lines of 21 have the same lateral spacing as those of 20. If the lines of 21 are printed directly under those of 20 then when viewed normally, the indicia 20 will obscure indicia 21. When the substrate is tilted the indicia 21 will appear as per the third aspect of figure 10 (page 18, paragraphs 1 and 2). Thus there is clear disclosure of the features 1.1, 1.2, 1.3.1 and 1.3.2.
Document D2 also provides general disclosure at page 10 at paragraph 5 in relation to the use of UV fluorescent indicia:
In a particularly preferred arrangement, one or more of the colours could be fluorescent so that they are only visible in ultraviolet light.
On this basis there is disclosure of feature 1.3.3 whereby indicia (item 21 or 20) are formed from a material which emits a coloured visible light when excited by a form of non-visible radiation. This disclosure also suggests both indicia might be formed from material which fluoresces upon exposure to UV. Applying this to figure 10 teaches a second pattern (item 20 or 21) of indicia which absorbs UV radiation. Here a second pattern is similar to the first pattern, is repeating, and has gaps through which radiation can pass through to excite the material of a first indicia (features 1.4.2, 1.4.3 and 1.5.1).
Remaining features 1.4.1 and 1.5.2 relate to the absorbing material being such that it transmits visible light but absorbs non-visible radiation such that non-visible radiation cannot pass. The opponent’s argument regarding the embodiment depicted by figure 10 relies on both indicia being formed from UV fluorescent material. The opponent submitted that “each of the first and second indicia of D2 absorbs ultraviolet light to emit (transmit) coloured visible light”. In response the applicant points to the particular nature of the embodiment described with respect to figure 10:
“There is no disclosure of a material which absorbs non-visible light but transmits visible light. Dr Hardwick appears to argue that the first indicia provides the pattern of the absorbing material as he argues that the lines of the first indicia obscure the lines of the second indicia. However, the first and second indicia are made from the same material and if these are made from a fluorescing material they both have the same properties and cannot meet the requirements of claim 1 that they absorb UV light and transmit visible light.”
Here I agree with the applicant that because the document discusses obscuring of one indicia by the other, there is no disclosure of selective blocking of radiation as claimed. For example, as first indicia 20 obscures second indicia 21 (or vice versa) there can be no disclosure of the feature of an absorbing material that prevents UV radiation from passing but also transmits visible light.
A second embodiment discussed at the hearing is depicted by figure 5. The document at page 10, paragraphs 2-4, broadly describes the embodiment as below.
In accordance with a further alternative, a security device comprises a substrate including a viewing region which is provided on one side with first indicia and on the other side with second indicia overlying the first indicia, wherein the first and second indicia can both be seen when the device is viewed from one side of the substrate under transmitted radiation, the first and second indicia cooperating together to generate an image different from the appearance of the first and second indicia individually, each of the first and second indicia comprising at least one block, the block(s) of one indicia overlapping the block(s) of the other indicia, and the blocks of the first and second indicia having different colours.
This alternative provides a further significant enhancement of see-through security devices. By providing the first and second indicia in blocks of different colours, a further colour will appear where there is overlap resulting from the combination of the two colours. Furthermore, each of the first and second indicia itself could be defined in more than one colour.
Typically, where the blocks include lines, the lines of each block are substantially parallel with each other, the lines defining one block of one of the indicia extending at an angle to the lines defining another block in the same indicia.
Figure 5 shows how such an embodiment may function. First indicia may comprise three blocks 11A-11C comprising lines printed in ink on a top side of a transparent substrate of a banknote. Second indicia printed on the underside of the substrate comprise a pair of blocks 12A, 12B. When viewed in reflected light on either side only one indicia will be visible, either 11A-C or 12A-B. However when viewed in transmission both sets of indicia will be visible and overlapping to form the numeral 5 in a different colour to the two indicia (page 15 paragraph 4). As was the case with figure 10, both indicia may be formed from fluorescent inks (page 10 paragraph 5). In regard to this embodiment the applicant submitted:
“This means that the material from which either of the indicia are formed cannot be made from an absorbing material as required in claim 1 – this embodiment in the prior art does not discuss light penetrating through gaps in the absorbing layer, but in fact passing through the coloured inks. Claim 1 requires that the non-visible radiation cannot pass through the absorbing material – which it would have to do in D2 in order to excite the underlying indicia.”
To me the applicant is correct in identifying that the embodiment involving overlapping blocks teaches viewing in a see-through mode whereby light travels through one indicia to reach another. This appears to be how the number 5 in figure 5 becomes visible. If UV excitable inks are used for both indicia then the embodiment suggests that UV radiation would pass through one indicia in order to excite the other. With this in mind it is clear that there is no discussion of light penetrating through gaps between elements of an absorbing layer formed of a UV excitable ink. It follows that there is no disclosure of UV radiation not passing through such a layer as required by the claim.
Therefore I find claim 1 novel in view of document D2. The document fails to disclose an absorbing material situated on an opposing side of a spacer layer to a first indicia in a similar pattern to the first indicia whereby the absorbing material prevents UV radiation from passing but transmits visible light. Claims 2-27 add further features to those defined in claim 1 and are therefore also novel in view of document D2.
Document D3
This document discloses a layered security structure for banknotes comprising indicia, and incorporating fluorescent materials that are observable on opposing faces of the structure. For the purpose of assessing novelty I will again use the notation for features introduced above.
Figure 3 of document D3 is useful in depicting relevant features.
Figure 3 discloses a security structure that may be embedded within an article such as a banknote (Figure 1) having a support 10 made of transparent plastic (paragraph [0109], disclosing features 1.1 and 1.2 of claim 1). The structure includes opaque and/or reflective first portions 13 surrounding transparent second portions 12, positioned on opposing surfaces of the transparent support (paragraph [0110]). Second portions 12 form groups of patterns which may represent text, a drawing, symbol or logo and which repeat along the longitudinal direction of the structure (paragraph [0111] and [0112]). In this regard document D3 also discloses first indicia in a repeating pattern of elements (features 1.3.1 and 1.3.2).
Portions 13 and 12 are also covered on at least one of the faces of the device with at least one fluorescent composition. Figure 3 shows fluorescent compositions 15 and 16 applied as continuous layers over the elements 13 and 12. Compositions 15 and 16 appear as first and second colours respectively when viewed under incident UV illumination. When viewed in transmission, third and fourth colours are produced due to the absorption spectrum of the compositions depending on the order through which light passes (paragraphs [0117] and [0118]).
Regarding feature 1.3.3 whereby first indicia is formed from material which emits when excited by non-visible radiation, the opponent points to elements 12 and 13 and the overlying UV fluorescent material. The applicant argues that feature 1.3.3 is not present because:
“…portions are not formed from a material which emits a coloured visible light when excited by a form of non-visible radiation. Whilst there are layers 15 and 16 which are formed from a fluorescent composition (paragraph [0117]), these layers covers (sic) the first and second portions but those portions are not formed from the fluorescent composition. This layer itself cannot provide the indicia of claim 1 as it is a continuous layer and not indicia comprising a plurality of repeating elements.”
On this point I agree with the applicant in that there is no disclosure of feature 1.3.3 because indicia of document D3 are not formed from UV fluorescent material.
Regarding features 1.4.1-1.5.2 the opponent points to figure 3 and disclosure at paragraph [0027] which describes that one of the fluorescent coatings may comprise fluorescent zones alternating with non-fluorescent zones. They submit that this:
“…implies that the transparent second portions on one of the faces need not be covered by the fluorescent composition. The fluorescent composition that covers the opaque and reflective first potions on the opposed face of the support of D3 is considered to be the elements of the absorbing material and the transparent second portions that are not covered by the fluorescent composition (non-fluorescent zone of paragraph [0027]) are considered to be the gaps.”
To me the fluorescent material of 15 or 16 may be considered a material which absorbs UV and transmits visible light. However there is no disclosure that the UV fluorescent material prevents UV from passing there-through in addition to allowing transmission of visible light.
Therefore I find claim 1 novel in view of document D3. The document fails to disclose a security device comprising first indicia formed from material which emits via excitation from non-visible radiation. The document also fails to disclose an absorbing material wherein non-visible radiation is able to pass through gaps to excite first indicia but cannot pass through the elements of the absorbing material. Claims 2-27 add further features to those defined in claim 1 and are therefore also novel in view of document D3.
Inventive Step
The test for obviousness was provided by Justice Aicken in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12 at [45]; 148 CLR 262 at 286 as follows:
“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 at [51]- [53]; 212 CLR 411 at [51]-[53] approved this approach, in addition to that taken in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157 at 187 in which Graham J had posed the question:
“Would the notional research group at the relevant date in all the circumstances directly be led as a matter of course to try [the claimed invention] in the expectation that it might well produce a useful [desired result]?”
Where the invention lies in a combination of features, the question is whether the combination, not each individual feature, is obvious when compared to the prior art base (Alphapharm [2002] HCA 59 at [41]; 212 CLR 411 at [41]; Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9 at [116]; (1980) 144 CLR 253 at 293).
The usual approach to determining inventive step is the problem-solution approach. Once the problem has been formulated and the common general knowledge and the prior art base has been determined, the question of whether the claimed solution is obvious must be addressed.
In determining the problem or ‘starting point’ for considering inventive step, I am mindful of the words of the majority of the Full Court in AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99 at [202]-[203] as follows:
“If the problem addressed by a patent specification is itself common general knowledge, or if knowledge of the problem is s 7(3) information, then such knowledge or information will be attributed to the hypothetical person skilled in the art for the purpose of assessing obviousness. But if the problem cannot be attributed to the hypothetical person skilled in the art in either of these ways then it is not permissible to attribute a knowledge of the problem on the basis of the inventor’s “starting point” such as might be gleaned from a reading of the complete specification as a whole.”
In other words, the Full Court has stated that when formulating the problem it is not permissible to incorporate information that is not available to the person skilled in the art as either common general knowledge or information available under section 7(3).
The problem
As I have mentioned earlier the invention relates to security elements for use in security documents, and the inclusion therein, of materials which emit a visible colour when stimulated with some form of non-visible light. Claim 1 relates to a particular arrangement whereby a transparent spacer layer provides spacing between a non-visible light absorbing material on one side, and non-visible light excitable indicia on the other. In the claim, light travels through gaps in the absorbing material and the spacer layer to excite the indicia. Here I note that there does not appear to be any limitation present in claim 1 providing an arrangement that avoids the use of often problematic opaque layers which are discussed at page 4, lines 5-16 of the specification.
Hence, to me it is clear that claim 1 is simply directed to the problem of providing an alternative teller-assist security feature that is difficult to counterfeit and easy to recognise (specification at page 4 lines 18-20). Given the problem is quite broadly defined I see no basis to conclude that an aspect of this problem is not either common general knowledge or s7(3) material.
The hypothetical person skilled in the art
In Root Quality v Root Control Technologies Pty Ltd (2000) 49 IPR 225 at [71], Finklestein J held that the skilled addressee would have the following characteristics:
“In Catnic Lord Diplock said (at 242) that skilled addressees are “those likely to have a practical interest in the subject matter of [the] invention”. A variety of people may have that interest. There are those who might wish to make or construct the invention, those who may wish to compound the invention and those who may wish to use the invention.”
To me a skilled addressee in the present case will have a practical interest in the design or manufacture of teller-assist security features. I do not doubt that such a person would range from a scientist/technician involved in the research or design of such features, to a manufacturer of such features. Dr Hardwick, who provides evidence in support for the opponent, was a Technical Development Manager who led a team responsible for polymer banknote production, and has more recently worked with the bank of Canada on their R&D review board. He has extensive experience in the development of security features in banknotes (BAH at [4]-[15]). The applicant provides evidence from Mr Reid who has spent almost his entire career in the security printing industry working primarily with banknotes. Recently he has worked as a principal consultant for Polymer Currently Consulting (DJR at [4] and exhibit DJR-2).
Both Dr Hardwick and Mr Reid represent a person who would have a clear practical interest in the relevant problem at the priority date. To the extent that I may prefer the evidence of one of the experts I will discuss this where necessary.
The prior art base (ascertain, understand and regard as relevant)
The opponent’s arguments regarding inventive step appear to rely primarily upon documents D2 and D3. Regardless, for completion I will deal with all of documents D1-D3 in my consideration.
Regarding the ascertainability of documents D1-D3, the applicant does not consider that the person skilled in the art might have searched for and read patent documents in the development of security devices. In making this argument the applicant points to evidence from Mr Reid at [12] where he states when discussing sources he would consult for information:
“In addition to my exposure to technical advances by virtue of my role and attendance at industry conferences, I also had access to the technical library at NPA, which included reference textbooks and academic papers, along with access to, and a close working relationship with, senior R&D managers at NPA, RBA and Securency. I would generally not look beyond these resources (and the various conference papers I collected) to investigate any new types of security devices.”
The concept of ascertaining documents in the context of a diligent searcher seeking solutions to a problem is well summarised in Rohm and Haas Company v Nippon Kayaku Kabushiki Kaisha and Sankyo Company, Limited[1997] APO 40 where the Delegate of the Commissioner stated with reference to patent documents:
"A document would be ascertained if it was published in such a manner or form that it could reasonably have been expected to be found by a person skilled in the art. A patent document dealing with the same technical issues would prima facie have been ascertained by a person skilled in the art.”
While the evidence establishes that Mr Reid would “generally not look” to patent documents, I am not satisfied that this shows a hypothetical skilled addressee could not be expected to include patent documents in a search. Documents D1-D3 are directed towards optical security features involving UV fluorescent layers and/or indicia, and transparent substrate layers. Such teller-assist type features are easily recognisable and difficult to counterfeit. In this regard they deal with the same technical issues as the present invention. I also note that Dr Hardwick, in his declaration provided as evidence in support, discusses the practice of conducting patent searches and consulting patent documents (BAH at [9] and [16]). Thus I conclude it is clear that the documents could have been ascertained. I have no doubt that the documents would have been understood by a person skilled in the art. I am also of the opinion that the documents could reasonably have been regarded as relevant. They are directed towards problems related to the search for alternative teller-assist type security features.
Hence, documents D1-D3 are part of the prior art base for consideration of inventive step.
Was the invention obvious?
Common general knowledge
The opponent broadly submitted that the claimed invention is obvious in view of common general knowledge. The opponent suggests that the following features of claim 1 were common general knowledge at the priority date:
a) A security device comprising light transmitting spacer layer.
b) A security device comprising first indicia comprising a plurality of repeating elements forming a first pattern and being formed from a material which emits a coloured visible light when excited by a form of non-visible radiation.
c) A security device comprising absorbing material, which absorbs non-visible radiation but transmits visible light, the absorbing material being applied in a second pattern and comprising a plurality of repeating elements having gaps between the elements.
Importantly I note that there is no evidence as to how the person skilled in the art might modify that which the opponent alleges to be common general knowledge to arrive at the claimed invention. There is no teaching in the common general knowledge that would direct a skilled person to create a security device involving a relationship between first indicia and absorbing material such that:
· They are on opposing sides of a transmissive spacer layer
· They are applied in similar repeating patterns
· Wherein non-visible radiation is able to pass through said gaps in the absorbing material and the spacer layer to excite the material forming the first indicia, but cannot pass through the elements of the absorbing material
The common general knowledge as identified by the opponent simply appears to teach the inclusion of various features such as the transparent spacer layer, first fluorescent indicia in a repeating pattern, and absorbing layer with gaps, as being present in security devices with no particular relationship between these three elements. The invention clearly lies in the particular claimed combination of these elements which does not appear at all obvious.
Therefore, the claimed invention involves an inventive step in view of common general knowledge.
Document D1
Document D1 fails to disclose a device as claimed in claim 1 comprising repeating first indicia at the same time as a pattern of first indicia being similar to a repeating pattern of absorbing material. There is also no disclosure of non-visible radiation passing through gaps between absorbing elements to excite first indicia elements. There is no evidence provided by the opponent as to any steps a skilled person might take to modify the teaching of document D1 to arrive at the undisclosed features. To me there is nothing routine in applying repeating first indicia and absorbing material in similar patterns and selectively blocking radiation in the manner claimed, nor is there any teaching of D1 directing a skilled addressee towards these features.
Therefore, the claimed invention involves an inventive step in view of document D1.
Document D2
The document fails to disclose an absorbing material situated on an opposing side of a spacer layer to a first indicia in a similar pattern to the first indicia whereby the absorbing material prevents UV radiation from passing but transmits visible light. Regarding this document the opponent argues:
“…claim 1 is obvious in light of the features that were part of the common general knowledge at the Priority Date and D2. It would have been obvious to the skilled addressee to apply the features that were part of the common general knowledge in the arrangement described in D2 to achieve the effect of D2 where one indicia on one side of the viewing region is obscured by the other indicia on the other side at one orientation, and the one indicia are visible through the other indicia at another orientation. That arrangement also results in radiation being able to pass through gaps between the one indicia on the one side of the viewing region to excite the other indicia on the other side of the viewing region but would be absorbed by (and thereby cannot pass through) the one indicia, as required by claim 1 of the Application.”
100.The opponent’s argument relies on an embodiment whereby the repeating pattern of indicia and absorbing material are considered to both be fluorescent materials situated on either side of a spacer layer. Such an embodiment discusses one indicia (absorbing material) obscuring the indicia on the other side. However if an indicia is to obscure then it cannot be transmissive of visible light as required by the claim. Further there is no disclosure of the absorbing material preventing the passing of UV light. In the sense that both indicia and the absorbing materials are UV fluorescent materials, the document appears to teach towards UV radiation penetrating through one fluorescent layer to excite the other.
101.No evidence is provided by Dr Hardwick as to steps he may have taken to modify the invention of document D2 to arrive at the claimed invention. Further, the common general knowledge does not point to there being anything routine about the particular claimed combination of a UV blocking, but visible-light-transmissive absorbing material being situated on an opposing side of a spacer layer to UV excitable fluorescent indicia.
102.Therefore, the claimed invention involves an inventive step in view of document D2.
Document D3
103.The document fails to disclose a security device comprising first indicia formed from material which emits via excitation from non-visible radiation. The document also fails to disclose an absorbing material wherein non-visible radiation is able to pass through gaps to excite first indicia but cannot pass through the elements of the absorbing material. The opponent raised similar argument for document D3 and for document D2. They argue
“It would have been obvious to the skilled addressee to apply the features that were part of the common general knowledge in the arrangement described in D3 to achieve the same effect of D3. That arrangement also results in radiation being able to pass through transparent second portions between the opaque and/or reflective first portions covered by the fluorescent composition on the one side of the support to excite the fluorescent indicia on the other side of the support but would be absorbed by (and thereby cannot pass through) the fluorescent composition that covers the opaque and/or reflective first portions on the one side, as required by claim 1 of the Application”
“…If it is considered that either of the indicia of D3 or the fluorescent composition covering the opaque and/or reflective first portions of D3 is not an absorbing material, the skilled person would readily replace the first portions that are covered by the fluorescent compositions with an elements of an absorbing material from the common general knowledge available at the Priority Date.”
104.I accept that it is common general knowledge to form indicia from UV fluorescent materials. In the present case document D3 describes indicia formed by way of transparent regions surrounded by substantially opaque and/or reflective regions. To form the indicia of D3 from UV fluorescent material goes against the teaching of the document as the document teaches application of fluorescent material over opaquely generated indicia to provide colour effects. The indicia of D3 are to be visible in transmitted visible light and they wouldn’t necessarily be so if made simply from UV fluorescent material. There being no evidence on the point from the opponent, it appears that the invention would work very differently if indicia were formed from UV fluorescent material. In this regard the skilled addressee would not be directly led to the claimed combination of features.
105.Therefore, the claimed invention involves an inventive step in view of document D3.
Conclusion
106.The opposition is unsuccessful.
Costs
107.The applicant has been successful in defending the application and normally costs would follow the event in being awarded against the opponent. In the present case, amendments were made by the applicant during the period provided to the opponent to file evidence in reply. On this point the opponent submitted that this indicates that the opposition to the originally accepted claims was successful, and seeks costs to be apportioned accordingly. In response, the applicant submitted that “the amendment occurred to address complaints about clarity which are not accepted as being of any real concern”.
108.I have reviewed the amendments in view of my decision and consider that the amendments do appear to put claims that were otherwise clear into a form that is easier to construe. However, the amendment also appears to materially narrow the claims and on this basis it can be said that the opponent has been successful.
109.Hence I will award cost against the applicant up to, and including, the date of advertisement of allowance of the amendment and award costs against the opponent thereafter.
Dr N.R. Madsen
Delegate of the Commissioner of Patents
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