Innovia Security Pty Ltd v Giesecke & Devrient GmbH - [2016] APO 64

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Innovia Security Pty Ltd v Giesecke & Devrient GmbH [2016] APO 64

Patent Application: 2010327032

Title:Security element, value document comprising such a security element and method for producing such a security element

Patent Applicant:                   Giesecke & Devrient GmbH
Opponent:  Innovia Security Pty Ltd
Delegate:  O L Haggar
Decision Date:  4 October 2016
Hearing Date:  12 July 2016 in Canberra
Catchwords:  PATENTS – opposition to the grant of a patent – construction of the claims – whether recourse to the body of the specification resolves a genuine ambiguity in the claims – whether the claimed invention is novel – whether the claimed invention involves an inventive step – evidence from appropriately skilled but inventive workers in the field – whether certain patent documents were either common general knowledge or section 7(3) information – whether the specification describes the invention fully – whether the claims are clear – opposition dismissed – whether costs should be apportioned in light of amendment of the specification during the opposition

Representation: Patent attorney for the applicant: FB Rice
Patent attorney for the opponent: Nigel Eugene Pereira of Watermark

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2010327032

Title:Security element, value document comprising such a security element and method for producing such a security element

Patent Applicant: Giesecke & Devrient GmbH
Date of Decision: 4 October 2016
DECISION
I dismiss the opposition, and award costs according to Schedule 8 against Innovia Security Pty Ltd. Subject to any appeal, I direct that the application proceed to grant.
REASONS FOR DECISION
The patent application

Patent application 2010327032 was filed by Giesecke & Devrient GmbH (G&D) on 3 December 2010 under the provisions of the Patent Cooperation Treaty as international application PCT/EP2010/007369 which claims priority from two basic applications filed in Germany on 4 October 2010 and 4 December 2009 respectively. The application was advertised as accepted on 24 July 2014. On 27 July 2015 G&D filed a request to amend the specification and claims. The amendments were subsequently allowed unopposed.
The opposition
Innovia Security Pty Ltd (Innovia) filed a notice of opposition to the grant of a patent on the application on 24 October 2014 followed by a statement of grounds and particulars on 27 January 2015.
The opposition was heard in Canberra on 12 July 2016. Innovia was represented by Nigel Eugene Pereire of Watermark. David Ian Lindsay, IP Manager at Innovia, also attended as an observer. G&D was not represented at the hearing and instead relied solely on the written outline of submissions it had filed on 5 July 2016.
Grounds of opposition
The statement of grounds and particulars identifies multiple grounds of opposition. All grounds were pursued by Innovia at the hearing and are as follows:
- the claimed invention is not novel;
- the claimed invention does not involve an inventive step;
- the specification does not describe the invention fully, including the best method known to G&D for performing the invention;
- the claims do not define the invention; and
- the claims are not clear, succinct, or fairly based on the matter described in the specification.
The evidence
Evidence in support consists of a declaration made by Dr Robert Arthur Lee on 22 April 2015 (Lee) with Exhibits RAL-1 to RAL-25. Evidence in answer consists of declarations respectively made by Jeremy Michael Dobbin on 24 July 2015 (Dobbin) with Exhibits JMD-1 and JMD-2, and Dr Michael Rahm on 21 July 2015 (Rahm) with Exhibits MR-1 and MR-2. Innovia did not file evidence in reply.
I will refer to the relevant parts of the evidence where appropriate. However, I note for the moment that due to the timing of events the evidence in support does not take account of the amendments made to the claims after acceptance.
Standard of proof
Examination of the application was requested on 10 December 2012. As a result, substantive amendments of the Patents Act brought about by the Intellectual Property Laws Amendment(Raising the Bar) Act 2012 (the RTB Act) do not apply. This includes the amendment to section 60(3A) that allows the Commissioner to refuse an application if satisfied on the balance of probabilities that a ground of opposition exits.
Consequently, the former standard for opposition proceedings applies and Innovia must establish that it is clear or practically certain that a valid patent cannot be granted (F Hoffman La RocheAG v New England Biolabs Inc [2000] FCA 283; 50 IPR 305 at 311, 319; Commissioner of Patents vSherman [2008] FCAFC 182 at [18], [22]; 79 IPR 46; Genetics Institute Inc v Kirin-Amgen Inc [1999] FCA 742; [1999] 92 FCR 106 at [17]).
This “higher standard” does not apply to the underlying primary facts (such as when a document has been published) which need only be established on the balance of probabilities, but the ultimate facts – the facts leading directly to a conclusion of a lack of novelty or a conclusion of obviousness – must be proved to the level of practical certainty (Aspiring IP Limited v Vision Systems Ltd [2010] FCA 1061; 88 IPR 52 at [35]).
The specification
Background to the invention
The specification indicates that the invention primarily concerns a security element that permits the authenticity of the object to which the security element is applied to be verified, and at the same time serves as protection against unauthorised reproduction. Examples of the objects to be protected are said to include security papers, identity documents and value documents such as bank notes, passports, admission tickets, vouchers and credit cards, as well as product authentication elements such as labels.
The specification acknowledges that optically variable security inks that contain platelet-shaped pigments with a thin film interference coating the perceived colour of which depends on the viewing angle are known. These security inks can be printed on a bank note with the pigments aligned approximately parallel to the surface of the bank note such that the printed area will change colour upon tilting of the bank note. It is also known to provide the pigments with a magnetic layer. This enables the pigments to be more precisely aligned parallel to one another by means of suitable magnets, or to be aligned in different directions in different regions of the security element. In another variation, the security inks are applied to an embossed relief structure which can be designed to produce regions with differently oriented pigments and accordingly different colours. The specification notes that in addition to a change in colour, the security inks also frequently produce a glitter effect similar to that exhibited by metallic lacquering on automobiles.
The disadvantages of these known security inks are that they are relatively expensive and the pigments can be difficult to align because the magnetic fields cannot be arbitrarily formed which results in poor resolution.
In general, the invention aims to provide a security element with which at least one of the known optical effects of security inks, in particular a “glitter effect”, can be achieved without actually employing any security inks.
The description
The specification sets out two broad aspects of the invention in terms which correspond to the independent claims. After discussing preferred features of these broad aspects, the specification proceeds to describe in detail a number of illustrated embodiments. It is convenient to refer to the description of the embodiment depicted in Figures 2 and 3 which are reproduced below.
Figure 2 shows an enlarged plan view of a part of a first areal region (here the digits representing the value of a bank note) of the present security element, and Figure 3 is a cross-sectional view of the security element along the line 7 in Figure 2.
The first areal region is divided into a multiplicity of reflective pixels 5 each having an area which is smaller than the area of the first areal region by at least two orders of magnitude. Three neighbouring pixels 5₁, 5₂ and 5₃ are represented in Figure 3. Each pixel has several reflective facets 6 comprised of the inclined faces of a reflective sawtooth grating formed in the upper side 8 of a carrier 9.
As shown in Figure 3, the angle of inclination α of the facets 6 is identical in each individual pixel 5₁, 5₂ and 5₃. However, the inclination of the facets 6 in adjacent pixels is different. Furthermore, the grating period (or width) d₃ of the sawtooth structure of pixel 5₃ is different to the respective grating periods d₁ and d₂ of the sawtooth structures of pixels 5₁ and 5₂. Due to the different orientation of the facets 6 of the individual pixels 5₁, 5₂ and 5₃, light L₁, L₂ and L₃ incident along a predetermined direction R is reflected by each pixel directionally in different reflection directions as represented schematically in Figure 3. This enables a glittering effect, or an effect comparable with a metallic lacquering, to be achieved.
In addition to varying their angle of inclination α, the orientation of the facets 6 can be adjusted by the choice of different azimuth angles ϕ. Thus in this instance the azimuth angle ϕ₁ of the facets of pixels 5₁, 5₂ and 5₃ respectively amounts to 90^o relative to the direction of arrow P1 in Figure 2. On the other hand, the azimuth angle ϕ₂ of the facets of pixel 5₄ is about 120^o relative to the direction of arrow P2, while the azimuth angle ϕ₃ of the facets of pixel 5₅ is about 280^o relative to the direction of arrow P3.
The specification goes on to explain that the azimuth angles ϕ and the angles of inclination α can be chosen randomly, and that the grating period is preferably such that at least two facets 6 are present in each pixel 5. Nevertheless, it is possible that at least some of the pixels have a single facet only. Furthermore, although the facets are preferably configured as planar area elements, they may be curved as is the case with pixel 5₆ in Figure 2.
The specification states at [0016] that a particular advantage of the present security element is that it enables the known security inks to be replaced while obtaining a comparable optical effect:
“The security element of the invention can have in particular an optical appearance that practically matches that of magnetically aligned pigments of optically variable security inks … The glitter effect of such inks is based on the individual pigments not reflecting exactly in a predefined direction, but a certain random variation of the reflection directions being present. The orientations of the facets in the security element of the invention likewise have such a variation, which results in a comparable glitter effect.”
And later at [0087]:
“With such a construction it is possible to replace known security inks in which platelet-shaped pigments with a thin film interference coating change their colour depending on the viewing angle. A comparable optical effect is obtained, whereby the optically perceptible quality is considerably better in comparison to security inks. Considerably more brilliant colours can be produced with the security element of the invention.”
The specification indicates at [0011] that the term “pixels” is to be understood as referring to “small partial regions of the reflective areal region, which can not only have an arbitrary outline form, but in particular need also not be arranged on a regular grid”. At [0021] “orientation” is said to be “in particular the inclination and/or the azimuth angle” of the reflective facets.
The claims
The specification ends with twenty-two claims. There are two independent claims: claim 1 to a security element, and claim 20 to a method of making a security element. The independent claims are in the following terms:
“1. A security element for a security paper, the security element comprising:
a carrier having a reflective areal region which is divided into a multiplicity of reflective pixels,
the area of each pixel being smaller than the area of the reflective areal region by at least one order of magnitude,
each pixel comprising at least one reflective facet which is formed in a surface of the carrier, the at least one reflective facet reflecting light incident along a predetermined direction on the areal region directionally in a reflection direction predefined by the orientation of said facet, and
the orientations of the facets of different pixels having a substantially random variation over the reflective areal region,
wherein the orientations of the facets of different pixels have a substantially random variation around different average orientations predefined in a region-based manner, resulting in regionally different average reflection directions of the pixels.
20. A method of making a security element for security papers, the method comprising the steps:
providing a carrier having a surface that is so height-modulated in an areal region that the areal region is divided into a multiplicity of pixels with respectively at least one facet,
coating said facets so as to form reflective facets which reflect light incident along a predetermined direction on the areal region per pixel respectively directionally in a reflection direction predefined by their orientation,
making the area of each pixel smaller than the area of the areal region by at least one order of magnitude,
arranging the orientations of the facets of different pixels to have a substantially random variation over the reflective areal region,
wherein in arranging the orientations of the facets, the orientations of the facets of different pixels are arranged to have a substantially random variation around different average orientations predefined in a region-based manner, resulting in regionally different average reflection directions of the pixels.”
With regard to the balance of the claims, claims 2 to 15 are claims to a security element which depend on claim 1. Claim 16 is to a value document comprising a security element as claimed in any one of the preceding claims. Claims 17 to 19 are dependent on claim 16. Claim 21 is dependent on independent method claim 20. Claim 22 is to an embossing tool comprising an embossing area capable of embossing the form of the facets of the security element according to any one of claims 1 to 15 into the carrier. Claim 23 is to the use of the security element according to any one of claims 1 to 15 as a master for exposing volume holograms.
It is perhaps worth noting here that the express requirement for orienting the facets of different pixels so as to provide a glitter effect does not appear until dependent claim 15.
Construction of the claims
Before proceeding to consider the grounds of opposition pressed by Innovia, it is firstly necessary to comment on the three issues of construction regarding claim 1 (and, by inference, independent claim 20) brought to my attention by Mr Pereire.
The manner in which the claims are to be construed was outlined by Bennett J in H LundbeckA/Sv Alphapharm Pty Ltd [2009] FCAFC 70; 81 IPR 228 (Lundbeck) 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"
The first issue of construction mentioned by Mr Pereire concerns the requirement in claim 1 that each of the multiplicity of reflective pixels comprises at least one reflective facet. It is beyond dispute that when construed in its broadest sense, claim 1 allows one or more of the pixels to include a single facet only. Such a construction is reflected in the body of the specification at paragraph [0075].
The second issue becomes problematic in the situation where at least one of the pixels is construed as comprising a plurality of facets. Claim 1 requires that “the at least one reflective facet” of each pixel reflects light incident along “a predetermined direction on the areal region … in a reflection direction predefined by the orientation of said facet”. On one possible view of claim 1, all facets of which an individual pixel is comprised are identically oriented so as to reflect incident light in the same direction. However, I agree with Mr Pereire that as a matter of ordinary language claim 1 encompasses the alternate possibility that the orientation, and thus the reflection direction, may vary between facets in the same pixel.
None of the expert evidence suggests that the skilled addressee would read either meaning as prevailing over the other. There is, as a consequence, a genuine ambiguity in claim 1 in that it is equally open to two distinct meanings. In accordance with the basic principles of construction, it is permissible in these circumstances to resort to the body of the specification to seek to resolve that ambiguity (Lundbeck at [120], and see Freeman v TJand FL Pohlner Pty Ltd [1994] FCA 1568; 30 IPR 377 at 383-384, Interlego AG v Toltoys Pty Ltd [1973] HCA 1; 130 CLR 461 at 476-479). This approach is to be contrasted from one in which the unambiguous meaning of a claim is varied or qualified by impermissibly reading a limitation derived from the body of the specification into the claim.
The broad disclosure of the body of the specification does not assist in determining the true construction of the independent claims. The consistory clauses at paragraphs [0010] and [0057] simply adopt the respective wording of claims 1 and 20, while in briefly referring to various embodiments of the invention at, for example, paragraphs [0012] to [0016], the specification does not use phrases such as “the orientation of the facets of the individual pixels” in any precise sense. The closest the broad disclosure comes to resolving this issue is found in the following passage at paragraph [0019]:
“Several of the pixels preferably respectively have several reflective facets of identical orientation which form a periodic or aperiodic sawtooth grating. It is possible for all pixels to respectively have several, preferably the same number of, reflective facets of identical orientation” (emphasis added).
This passage is unfortunately not well-expressed and thus, while lending support to the notion that the respective facets of an individual pixel are identically oriented, it does not totally rebut the possibility that the orientation of the respective facets of some pixels may differ. This brings me to the detailed description of the invention which the specification has set forth with reference to a number of drawings. There are seven sheets of drawings in total. Notably, a feature common to all drawings is that the orientation of the respective facets in each individual pixel is identical. I am consequently of the view that when read in the context of the body of the specification as a whole, there is no residual doubt as to the meaning of independent claims 1 and 20. Both claims should be understood in this light as confining all facets of which an individual pixel is comprised to be identically oriented so as to reflect incident light in the same direction.
The third issue stems from the requirement in claim 1 that “the orientations of the facets of different pixels have a substantially random variation around different average orientations pre-defined in a region-based manner, resulting in regionally different average reflection directions of the pixels”. Mr Pereire submitted that this does not necessarily mean that where a plurality of facets is present, the facets in one pixel are randomly oriented with respect to the facets in another pixel. When this issue is read in conjunction with the second, it appears to me that what Mr Pereire is in effect saying is that the language of claim 1 includes the possibility that the facets of an individual pixel may be randomly oriented around a pre-defined average orientation. Such an interpretation treats the pixels as themselves constituting “regions” which on its face is not inconsistent with the meaning ascribed to the term “pixels” by the specification at paragraph [0011].

Once again there is no expert evidence on whether either construction would be favoured by the skilled addressee and, as with the second issue, difficulties arise when attempting to determine the true construction of the independent claims by reference to the broad disclosure of the body of the specification. However, in all of the illustrated embodiments of the invention, the facets of individual pixels are randomly oriented by comparison with the facets of other pixels. As a consequence, I am of the view that when read in the overall context of the body of the specification, the independent claims are not fairly open to the alternate interpretation for which Innovia contends.
Novelty
Legal principles
By section 7(1) of the Act an invention is taken to be novel when compared with the prior art base as it existed before the priority date unless it is not novel in the light of certain “kinds of information”, one of which is prior art information “made publicly available in a single document or through doing a single act”.
It is well established that the general test for anticipation or want of novelty is the reverse infringement test (Meyers Taylor Pty Ltd v Vicarr Industries Ltd ([1977] HCA 19; 137 CLR 228 at [19]), and 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; 16 IPR 545 (Nicaro) at [19]).
To meet this requirement, the alleged anticipation must contain “clear and unmistakable directions” to produce the invention as claimed (Pfizer Overseas Pharmaceuticals v Eli Lilley and Company [2005] FCAFC 224; 68 IPR 1 at [314]). However, if the alleged anticipation contains a direction which is capable of being carried out in a manner which would infringe the invention as claimed, but would at least as likely be carried out in such a way that would not do so, the invention as claimed will not be anticipated (General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [1972] RPC 457 (General Tire) at 485-486; 1A IPR 121 at 138, Novozymes A/S v Danisco A/S [2013] FCAFC 6; 99 IPR 417 at [177]).
The novelty challenge
Innovia does not dispute that the present application is entitled to its earliest possible priority date of 4 December 2009,[1] but nevertheless asserts that the invention as claimed is not novel when compared to the following prior art documents:
[1] Innovia outline of submissions at [13]
- US 2008/0258456[2] (document D1); and
- WO 2006/125224[3] (document D2).
Both documents were published before the earliest possible priority date and are, as a consequence, part of the prior art base.
Document D1
I note with interest that Dr Rahm is named as a co-inventor both in respect of the present application and document D1. G&D submits that he is as a consequence well qualified to undertake the comparison mandated by section 7(1). However, as it transpires, nothing of present importance turns on this.
Document D1 discloses an optically variable security element for securing valuable articles, a method for manufacturing such a security element and a data carrier equipped with such a security element. The nature of the security element is described using a banknote as an example and is best illustrated by Figure 2 which is reproduced below.
The security element 20 shown in this figure includes a raster image 22 composed of a plurality of pixels 24, each of which includes a plurality of achromatically reflective micro mirrors 26-1, 26-2, as indicated for two of the pixels in Figure 2. The micro mirrors are said to be characterised by:
“… the parameters size, contour shape, relief shape, reflectivity and spatial orientation and each reflects incident light 28 in accordance with the specifications of this set of parameters in a certain spatial region 30. For example, the micro mirrors 26-1 and 26-2 in FIG 2 each exhibit a quadratic base area A, thus a quadratic contour shape, and a lateral expanse of 15 x 15 μm². Furthermore, the micro mirrors have a simple relief shape having a single, flat reflection area 32 that encloses a certain tilt angle α with the surface of the security element.”[4]
[4] RAL-3 at [0041]-[0042]
It is further said in relation to the micro mirrors that:
“… in first pixels are present micro mirrors 26-1 of a first kind in which the reflection area 32 exhibits a tilt angle of α = 30^o to the surface of the security element … In second pixels, micro mirrors of a second kind are present whose reflection area 32 is not tilted against the surface of the security element (expressed by tilt angle α = 0^o).”[5]
Document D1 explains that if the security element is viewed from the spatial direction in which the micro mirrors 26-1 reflect, the pixels in which these micro mirrors are present appear light, whereas the pixels in which the micro mirrors 26-2 are present appear dark, such that a “black-and-white” raster image having the desired image content is created in accordance with the arrangement of the pixels 24. Document D1 then continues:
“In the simplest case, the pixels of the raster images are each filled with homogeneous micro mirrors. For example, the screen dots can each exhibit a size of 100μm x 100μm and include 100 micro mirrors having a base area of 10μm x 10μm. ‘Dark’ pixels can also be achieved by a random orientation of the individual micro mirrors in this pixel, since in this way, less light is directed into the spatial directions preferred by other pixels.”[6]
G&D has submitted that the “screen dots” referred to in the above passage correspond to pixels 24.[7] Innovia has not proffered any opinion as to the meaning of this term.
[5] RAL-3 at [0043]
[6] RAL-3 at [0046]
[7] G&D outline of submissions at [27]
For ease of understanding the parties’ competing submissions regarding the disclosure of document D1, it is useful to rewrite claim 1 as follows:
1. A security element for a security paper, the security element comprising:
1.1 a carrier having a reflective areal region which is divided into a multiplicity of reflective
     pixels,
1.2 the area of each pixel being smaller than the area of the reflective areal region by at least one
     order of magnitude,
1.3 each pixel comprising at least one reflective facet which is formed in a surface of the carrier,
1.4 the at least one reflective facet reflecting light incident along a predetermined direction on the
     areal region directionally in a reflection direction predefined by the orientation of said facet
1.5 the orientations of the facets of different pixels having a substantially random variation over
     the reflective areal region,
1.6 wherein the orientations of the facets of different pixels have a substantially random variation
     around different average orientations predefined in a region-based manner, resulting in
     regionally different average reflection directions of the pixels.
I turn now to consider whether the security element the subject of document D1 possesses each of these features.
Dr Lee submits that the disclosure by document D1 of a raster image composed of a plurality of pixels can be equated to feature 1.1. He further submits that feature 1.2 is disclosed by document D1 at paragraph [0046]. As indicated above, this paragraph states that each of the plurality of pixels is filled with homogeneous micro mirrors. The “screen dots” (i.e. pixels) are exemplified as exhibiting a size of 100μm x 100μm and including 100 micro mirrors having a base area of 10μm x 10μm. Dr Lee asserts on this basis that document D1 discloses that the area of each pixel is “smaller than the area of the screen dots by at least one order of magnitude”[8] in accordance with feature 1.2. Given the language in which this feature has been framed, it is apparent that Dr Lee is here equating the micro mirrors, rather than the pixels as was originally the case, of document D1 to the pixels of claim 1.
[8] Lee at [52]
Mr Pereire made the further point that when document D1 is interpreted in this way, either the raster image or any one of the pixels it discloses can be equated to the reflective areal region recited by features 1.1 and 1.2.
Dr Lee for a second time departs from his initial analysis of document D1 when he goes on to consider features 1.3 to 1.6. He submits that features 1.3 and 1.4 are disclosed by document D1 at paragraph [0041] where the micro mirrors are characterised by a set of parameters, including spatial orientation, and said to reflect incident light “in accordance with the specifications of this set of parameters in a certain spatial region”. With regard to features 1.5 and 1.6, Dr Lee submits that as additionally disclosed by document D1 at paragraph [0046], “dark” pixels can be achieved by a random orientation of the individual micro mirrors. He asserts that the “completely random arrangement of pixels/facets” disclosed by document D1 would “inherently have an average orientation”. When these submissions are read together in light of the language of features 1.3 and 1.4, it is evident that Dr Lee has shifted to the view that the micro mirrors of document D1 correspond to the facets, and not the pixels, of claim 1.
Innovia has developed this line of reasoning as follows:
“Claim 1 of the Opposed Application recites that the pixel [sic] comprises one reflective facet or more than one reflective facet (‘each pixel comprising at least one reflective facet’). Therefore, in its broadest sense and in the context of the Opposed Application, a micro mirror of D1 corresponds to a pixel with one facet of the Opposed Application. D1 describes at paragraph [0046] that the individual micro mirrors in a pixel have a random orientation. Each micro mirror in a ‘pixel’ of D1 is effectively a ‘sub-pixel’, and the pixel itself is a collection of ‘sub-pixels’ of random orientation. Therefore, it necessarily follows that, from having micro mirrors in a pixel randomly oriented, the micro mirrors of D1 (i.e. sub-pixels) would inevitably result in a [substantially] random variation …”[9]
[9] Innovia outline of submissions at [34]
Mr Pereire reiterated the contention that the micro mirrors disclosed by document D1 can be individually held to constitute a “pixel” having a single “facet” and correspondingly equated to feature 1.3 when claim 1 is construed in its broadest sense. Put another way, Innovia relies on the premise that in the present context there is no distinction between the terms “micro mirror”, “pixel” and “facet”. This much emerges for example from Mr Pereire’s submission that “the pixel is the facet when the pixel comprises only one facet”.
G&D has refuted Innovia’s analysis of the disclosure of document D1. It draws attention to the embodiment of Figure 2 “where pixels are defined to have a plurality of micro mirrors” (original emphasis). G&D argues on this basis that when properly construed “the ‘pixels’ of reference D1 should be equated with the ‘pixels’ of the present application’ and, equally, “the ‘micro mirrors’ of reference D1 are to be equated with the ‘facets’ of the present application”.[10] However, it is not necessary for me to come to a view on this area of dispute since the disclosure of document D1 in whatever guise does not assist the case pressed by Innovia in relation to features 1.5 and 1.6.
[10] G&D outline of submissions at [27]
It will be recalled in this regard that Dr Lee has referred to the description of “dark” pixels at paragraph [0046] of document D1 in which the individual micro mirrors have a random orientation. Dr Rahm submits that Dr Lee’s reliance on this disclosure is misguided. He expresses the contrary opinion that:
“… D1 does not disclose that one or several facets within one pixel (‘each pixel comprising at least one reflective facet …’) reflect light in a predefined direction (i.e. in the case of plural facets, all facets of one pixel reflect in the same direction) and that facets of different pixels have randomly varying different [sic] orientations. In that context Dr Lee refers to paragraph [0046] of D1 … However D1 only discloses that the orientations of the facets within the pixels have a random variation (‘… by a random orientation … in this pixel’). Thus Dr Lee appears to be incorrect when alleging that the subject matter of claim 1 is disclosed in D1” (original emphasis).[11]
[11] Rahm at [6]
I agree with Dr Rahm. Mr Pereire maintained that in describing that the individual micro mirrors in a pixel are randomly oriented relative to each other, paragraph [0046] reads directly onto features 1.5 and 1.6. However, I have previously found as a matter of construction that when the language of the independent claims is read in the context of the body of the specification as a whole, they are to be properly read as meaning that the facets of individual pixels are (i) identically oriented so as to reflect incident light in the same direction and (ii) randomly oriented by comparison with the facets in other pixels. It is readily apparent that such an arrangement is not contemplated by paragraph [0046] of document D1, irrespective of whether it is assumed that the micro mirrors correspond to “sub-pixels” having a single facet as argued by Innovia.
Furthermore, document D1 states at paragraph [0041] that the micro mirrors are characterised by a designated set of parameters, including spatial orientation, and are arranged to reflect incident light “in accordance with the specifications of this set of parameters in a certain spatial region”. To this extent (and momentarily adopting Innovia’s interpretation of the term “micro mirrors”), it could be said that document D1 discloses facets which reflect incident light in a direction “predefined” by their orientation in accordance with feature 1.4. Innovia submits that paragraph [0046] provides an inherent disclosure of the “average orientations” of the randomly oriented facets as set forth in feature 1.6.
However, this submission overlooks the fact that feature 1.6 stipulates that “the orientations of the facets of different pixels have a substantially random variation around different average orientations” (emphasis added). As said earlier, paragraph [0046] of document D1 on which Innovia relies goes no further than establishing that the individual micro mirrors within a pixel are randomly oriented. Thus document D1 falls well short of disclosing those aspects of feature 1.6 that I have emphasised above. Feature 1.6 additionally stipulates that the different average orientations of the facets of different pixels are “predefined in a region based manner”. This requirement cannot on any view be clearly extracted from the disclosure of document D1.
Based on the foregoing, I find that document D1 does not take all of the essential features of independent claims 1 and 20. Document D1 therefore does not deprive the independent claims of novelty. It necessarily follows that the dependent claims are likewise not deprived of novelty.
Document D2
Document D2 relates to an image presentation system which can be used as a security device for overt and covert authentication of currency, documents and products.
The image presentation system is said in one form to include an array of focusing elements, and an image system comprising or formed from an array or pattern of microstructured icon elements designed to collectively form an image or certain desired information. The focusing elements and the image system cooperate, for example through optical coupling, to form a synthetic optical image. As further explained at page 3 of document D2:
“The present disclosure … relates to a film material that utilises a regular two-dimensional array of non-cylindrical lenses to enlarge micro-images, called [icon elements] herein, and to form a synthetically magnified image through the united performance of a multiplicity of individual lens/icon image systems”.
A basic understanding of the subject image presentation system can be gleaned from Figure 1a which is reproduced below.
As described by document D2 on pages 31 and 32, the system 12 illustrated by this figure includes:
“… micro-lenses 1 that have at least two substantially equal axes of symmetry and that are arranged in a two-dimensional periodic array. Lens diameter is preferably less than 50μm and the interstitial space 3 between lenses is preferably 5μm or less … Micro-lens 1 focuses an image of icon element 4 and projects this image 10 toward a viewer. The system is commonly used in situations having normal levels of ambient lighting, so the illumination of the icon images arises from reflected or transmitted ambient light. Icon element 4 is one element of a periodic array of icon elements having periods and dimensions substantially similar to those of the lens array including lens 1. Between the lens 1 and the icon element 4 is an optical spacer 5, which may be contiguous with the lens 1 material or may optionally be a separate substrate 8 … The icon elements 4 may be optionally protected by a sealing layer 6 … Sealing layer 6 may be transparent, translucent, tinted, pigmented, opaque, metallic, magnetic, optically variable, or any combination of these that provide desirable optical effects and/or additional functionality for security and authentication purposes …”
A range of micro-lens patterns are described with reference to Figures 3a to 3i. Figures 7a to 7c illustrate alternative embodiments of the icon elements. In view of the reference made to it by Innovia, Figure 7c is shown below.
This figure is said on page 51 to depict a material having lenses 1 separated from microstructured icon elements 114 by optical spacer 5. The icon elements are formed from voids 113 or solid regions 115 in the microstructure, singly or in combination. The voids can optionally be filled or coated with another material such as evaporated metal, material having a different refractive index, or dyed or pigmented material.
Innovia also relies on Figure 34. This figure has been described by document D2 as a cross-section through the icon layer 821 of one embodiment of a material that bears microstructured icon elements.
As stated by page 93, the icon layer 821 may be freestanding or it may optionally be provided on a substrate 820, or a transparent substrate 820 if the icon layer constitutes an element in a moiré magnification system wherein the optical layer is optically coupled to a micro-lens array through the transparent substrate. The microstructured icon elements can be formed as either recesses or raised areas in a layer of material, such as icon layer 821, or in a substrate.
Document D2 further states that the microstructured icon image elements can take a wide variety of forms and geometries, including “random rough and pseudo-random rough patterns 829”. It then says that icon layer 821 can incorporate an array or pattern of homogeneous microstructures compiled solely of, for example, asymmetric void patterns 822. Alternatively, the icon layer can incorporate an array or pattern of two or more of the microstructures designated as 822-832. In either case, the microstructures can be arranged into an array of icon elements that collectively form an image, similar to a group or array of pixels forming a conventional printed image.
Dr Lee has submitted that the microstructure icon elements illustrated in Figure 7c can be equated with the reflective pixels of feature 1.1[12] As already explained, document D2 discloses that the icon elements of this figure may be formed from voids in the microstructure and filled or coated with another material such as evaporated metal which Dr Lee seems to imply is a material having reflective properties. G&D questions whether the feature of reflectivity has been disclosed to the requisite level of certainty,[13] but I note from the more general description on page 32 that the illumination of the icon images can arise from reflected ambient light.
[12] Lee at [79]
[13] G&D outline of submissions at [51]

Dr Lee further submits that feature 1.2 can be inferred from certain figures of document D2. It is a matter for comment that he has looked to Figures 13 to 15, 17 and 18 to support this submission, but not Figure 7c.[14] I will have more to say on this shortly. For now, I am satisfied following a visual inspection of the figures nominated by Dr Lee that their disclosure as regards feature 1.2 is as he has stated.
[14] Lee at [80]
In relation to features 1.3 and 1.4, Dr Lee redirects attention to Figure 7c. He claims that “the icon elements of D2 formed by voids filled with a reflective metal material would reflect light directionally depending on their orientation”.[15] I accept this as a broad proposition. However, it must be remembered that in accordance with feature 1.3, each reflective pixel comprises at least one facet which reflects incident light in a direction predefined by the orientation of the facet(s). Therefore the only way in which Dr Lee’s contention can be sensibly understood is to assume that, similarly to his analysis of document D1, he views each icon element as being equivalent to a pixel comprised of a single facet. Even so, in describing Figure 7c document D2 makes no mention of the orientation of the icon elements, let alone an orientation that is “predefined”.
[15] Lee at [81]
With respect to features 1.5 and 1.6, Dr Lee abandons all reliance on the figures identified above, and instead focuses on Figure 34. I must say here that his overall appraisal of document D2 seems to have been largely informed by an asserted disclosure arising from the selective assembly or “mosaic” of individual pieces of information contained in document D2 which, as established by authority, is prohibited in the case of an allegation of want of novelty (Nicaro at [21], Minnesota Mining & Manufacturing Cov Beiersdorf (Australia) Ltd [1980] HCA 9; 144 CLR 253 (Minnesota Mining) at 293, ICI Chemicals & PolymersLtd v Lubrizol Corporation Inc [2000] FCA 1349; 106 FCR 214 at [43]).
Whatever the case may be, I agree with Dr Rahm’s submission that:
“Dr Lee’s allegations [on document D2] appear to be very far-fetched. First, the random rough patterns disclosed on page 93 and in Figure 34 of D2 do not appear to constitute an arrangement of reflective facets but rather are simply and solely rough surfaces. Additionally, the further pattern and structures shown in Figure 34 appear not to disclose or anticipate the features of claim 1. At most, the structures indicated by reference numerals 830 or 824 might be argued to correspond to facets. However, the ‘flat surface patterns 830’ are very regular without any random variation and the irregular patterns 824 are denoted as ‘light trap patterns’. Hence, at least the feature that the facets reflect light is missing.”[16]
[16] Rahm at [13]
Furthermore, and as submitted by G&D:
“… in their written submissions, as regards document D2, the Opponent … omits completely any reference to the second last integer of [claim 1] ‘the orientations of the facets of different pixels having a substantially random variation over the reflective areal region’ and does not explicitly indentify where this feature appears in D2.”[17]
[17] G&D outline of submissions at [52]
I consider this criticism of Innovia’s case on the alleged disclosure of feature 1.5 to be entirely justified. The same can said of its case regarding feature 1.6. Document D2 does not provide any indication that the “facets” (if they can be called that) shown in Figure 34 have a substantially random variation around different average orientations predefined in a region-based manner.
For the reasons discussed I find that document D2 does not take all of the essential features of independent claims 1 and 20. Document D2 therefore does not deprive the independent claims, and hence the dependent claims, of novelty.
Summary on novelty
I have found that neither of the documents relied on by Innovia anticipates the claimed invention. This ground of opposition accordingly does not succeed.
Inventive step
Legal principles
According to sections 7(2) and 7(3) as they existed before the commencement of the RTB Act, an invention is taken to involve an inventive step, when compared to the prior art base, unless the invention would have been obvious to the person skilled in the relevant art in the light of common general knowledge within Australia either considered alone or together with the information specified in section (3). This information includes one or a combination of two or more pieces of prior art information being information that the person skilled in the art could be reasonably expected to have ascertained, understood and regarded as relevant by the person skilled in the relevant art.
The test for whether an invention is obvious (non-inventive) is to ask if it would have been a matter of routine to proceed to the claimed invention. In Wellcome Foundation Ltd v VRLaboratories (Aust) Pty Ltd [1981] HCA 12 at [45]; 148 CLR 262 at 286, it was stated:
“The test is whether the hypothetical addressee faced with the same problem would have taken as 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 v Alphapharm Pty Ltd [2002] HCA 59; 212 CLR 411 (Alphapharm) at 433 stated that it is also permissible to use the reformulated “Cripps question”:
“Would the notional research group at the relevant date, in all the circumstances, which include a knowledge of all the relevant prior art and the facts, directly be led as a matter of course to try the invention as claimed in the expectation that it might well produce a solution to the problem.”
It is important to keep in mind that where, as in the present case, the claimed invention involves a combination of features, what must be shown to be obvious is that combination. Thus, as stated in Alphapharm in [41]:
“… The claim is for a combination, the interaction between the integers of which is the essential requirement for the presence of an inventive step. It is the selection of the integers out of ‘perhaps many possibilities’ which must be shown by Alphapharm to be obvious, bearing in mind that the selection of the integers in which the invention lies can be expected to be a process necessarily involving rejection of other possible integers …”
As becomes clear from the foregoing, the test for inventive step is in terms of obviousness. It is also clear that any potential solution to a problem will not be obvious unless it would have been a matter of routine to try that solution, but with the significant caveat that there must be an expectation that the potential solution “might well” solve the problem. It is not necessary that success is guaranteed. It must further be realised that the inventiveness required to sustain a claimed invention is quite small: a “scintilla” of inventiveness is all that is needed (Alphapharm at [195]).
Whether an invention is obvious is a question of fact or, as it is sometimes described, “a kind of jury question”. However, the question is not whether the claimed invention is obvious to the court (and hence, by direct analogy, to the Commissioner), but whether it would be obvious to the person skilled in the relevant art (Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) 2007 HCA 21; 235 CLR 173 at [51]).
The misuse of hindsight
The authorities have consistently warned against approaching the question of obviousness with the benefit of hindsight. As said for example in Colgate-Palmolive Company and Colgate-Palmolive Limited v Cussons Pty Limited [1993] FCA 224; 26 IPR 311 at [156]:
“The important thing to remember and to keep steadily in mind is the danger of applying hindsight. When the court comes to consider whether a claimed invention is obvious, it comes to the question with the benefit (in one sense the disadvantage) of then existing knowledge and practice. It is most difficult to go back, but that is what one must endeavour to do. One therefore needs to take the greatest care to endeavour to see that hindsight plays no part in the decision making process.”
The High Court in Alphapharm also warned against the misuse of hindsight, noting that the danger of such misuse will be “particularly acute where what is claimed is a new and inventive combination for the interaction of integers, some or all of which are known”.
The person skilled in the relevant art
The question of whether a claimed invention involves an inventive step is to be determined through the eyes of the person skilled in the relevant art.
The notional “person skilled in the art” is an artificial construct that is used as a tool of analysis “which guides the court in determining, by reference to expert and other evidence, whether an invention as claimed does not involve an inventive step” (AstraZeneca AB v Apotex Pty Ltd [2015] HCA 30; 89 ALJR 798 at [23]). In general, the skilled person is someone who works in the art or science with which the invention is connected. He or she is a person, or team, likely to have a practical interest in the subject matter of the invention. While the skilled person may be assumed to be well-versed in the relevant art, such a person must be taken to be non-inventive (Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980; 49 IPR 225 at [70]-[71] referring for instance to Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183 at 242 and General Tire at 485, Minnesota Mining at 293).
The parties are generally agreed that for present purposes the skilled person is someone having relevant knowledge of optical security devices. I also note that there is no dispute between the parties as to the expertise of Dr Lee or Dr Rahm in this field. However, Innovia submits that as Dr Lee is named as co-inventor by the present application he does not qualify as the requisite non-inventive person skilled in the art. Mr Pereira further submitted that the objectivity of Dr Rahm’s evidence is compromised by reason of his close association with G&D. While there may be some substance to these submissions, I consider that Dr Lee’s evidence is likewise open to criticism. As established by the evidence of Mr Dobbin, Dr Lee is the sole or joint inventor in respect of a total of some fifteen patents and patent applications in the name of Innovia which relate to optical security devices.[18]
[18] Dobbin JND-1
Nevertheless, the courts have accepted evidence, including on matters of obviousness, from witnesses who are highly qualified and skilled as well as being inventive (JMVB Enterprises PtyLtd v Camoflag Pty Ltd [2005] FCA 1474; 67 IPR 68 at [91]-[95] and [98], Firebelt Pty Ltd vBrambles Australia Limited [2002] HCA 21; 188 ALR 280 at [44]). I see no reason to depart from this approach, particularly given the specialised nature of the field of the present invention and the proven qualifications and experience of Drs Rahm and Lee. It is to be also noted in this regard that as said by the delegate in Braas & Co GmbH v Humes Ltd [1993] APO 10; 26 IPR 273 at 284 (with original emphasis):
“It is the weight to be given to such evidence of ‘overqualified’ persons which is the issue, and this will depend on the facts of the matter. It is not the case that such evidence is automatically shut out of contention.”
Innovia has additionally submitted that Dr Lee’s evidence should be accepted in preference to that of Dr Rahm who, unlike Dr Lee, is “based overseas”.[19] The effect of the combined operation of section 7(2) and the definition of “prior art base” in Schedule 1 as they stood before the commencement of the RTB Act is that the common general knowledge that can be used to sustain an assertion of lack of inventive step is restricted to such knowledge as it existed in Australia before the priority date. However, Dr Lee has stated that in his opinion:
“… the person skilled in the art in Australia at the Priority Date would have had equal knowledge to those working in the field outside of Australia. The industry around security devices for documents, such as banknotes, is relatively small and highly competitive. For these reasons, it was always necessary for me … to keep up to date with developments around the world.”[20]
This establishes to my satisfaction that the field of the present invention is of an international nature and, consequently, that Dr Rahm’s evidence cannot be disregarded merely because he has not worked in the field in Australia.
The inventive step challenge
Innovia submits that the invention as claimed lacks an inventive step in the light of the common general knowledge when considered together with section 7(3) information.
[19] Innovia outline of submissions at [20]
[20] Lee at [21]
It is convenient to mention here that one of the pieces of prior art information relied on by Innovia is international application WO 2009/091041[21] (document D21). Document D21 is in the Japanese language as a consequence of which Innovia has argued its relevance on the basis of the disclosure of the United States family equivalent, US 2010/0254007.[22] The United States application was published after the latest of the possible priority dates, but I have no reason to suspect that its contents vary in any material way from those of document D21.
[21] Lee RAL-23
[22] Lee RAL-24
Common general knowledge
The notion of common general knowledge was described in Minnesota Mining at 292 as involving:
“… 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 making improvements in old, and it must be treated as being used by an individual as a general body of knowledge.”
The common general knowledge will encompass not only material that is retained in the memory of the skilled person, but also material that the person knows of, and to which they might refer as a matter of course, or habitually consult. This material could include, for example, standard texts and handbooks (ICI Chemicals & Polymers Ltd v Lubrizol Corporation Inc [1999] FCA 345; 45 IPR 577 at [112]).
It is most unfortunate that I do not have the benefit of any evidence from G&D on the state of the common general knowledge. For its part Innovia contends that as established by the evidence of Dr Lee, those working in the relevant art took care to regularly familiarise themselves with recent developments by:
- Reviewing patent specifications;
- Consulting each edition of the textbook entitled “Optical Document Security” by Rudolf L van Renesse (including the 2005 edition exhibited by Dr Lee[23] (document D19));
- Attending international conferences, including the Society for Optical Engineering (SPIE) proceedings, and/or discussing the presentations and papers of such conferences with colleagues who had attended; and
- Reviewing scientific papers.[24]
Dr Lee has characterised document D19 as “a standard reference book in the banknote industry”.[25] In the absence of evidence to the contrary, I accept that the contents of this document had assimilated into common general knowledge. However, I am not convinced, as Innovia seems to suggest, that patent specifications may themselves be regarded as part of the common general knowledge of all those engaged in the relevant art merely because Dr Lee followed a practice of making himself familiar with them in the course of his research. In Minnesota Mining it was said at 294-295 (with citations omitted):
[25] Lee at [22.15]
“There may be some fields of endeavour in which those who work therein study and make themselves familiar with all patent specifications as they become available for inspection in one or in many countries so that what was contained therein becomes common general knowledge in that particular trade or field of manufacture in the country in question. But this is not so in all fields or in all countries. There was no evidence in the present case that those working in Australia in the field of adhesives or of surgical tapes followed such a practice or that any of the specifications relied upon was part of the common general knowledge of those working in those fields in Australia.
The respondent relied upon a number of prior specifications which had been available in Australia for public inspection before the priority date as providing a basis for the argument that the invention claimed was obvious. For the reasons which I have set out above I do not regard such specifications as capable of sustaining that argument without evidence that they were part of common general knowledge at that time.”
Here there is no evidence of this kind. Dr Lee has referred to “the common general knowledge, such as represented by any one of D1, D2 …”[26], but does not present any evidence from which I could infer that either of these documents had become so widely known to those working in the field of the invention that they can be regarded as part of their background knowledge. Indeed, it appears that Dr Lee was not even aware of them.[27]
[26] Lee at [110]
[27] For example, compare Lee at [22.9] with [22.2], [22.3]
Nevertheless, Innovia asserts that matters well known to the skilled person included:
(a)[Features 1.1 to 1.4 of claim 1].
(b)Facets configured as a substantially planar area are never perfectly planar in practice and there will be some degree of randomness when manufacturing these facets.
(c)Using reflective facets to provide a glitter optical effect.
(d)The use of an embossing tool to make a microstructured security element.
(e)The subject matter [of document 19].
I have already determined that the contents of document D19 had become common general knowledge. The relevance of the matters noted in points (b) and (d) to Innovia’s inventive step challenge has not been made at all clear to me, and so I will have no further regard to them. As regards the matter noted in point (c), Innovia relies on the following evidence from Dr Lee:
“Randomly varying the distribution of the facets according to claim 1 within a small range of randomisation would inevitably result in a glitter effect. By having a random or pseudo-random pattern for the microstructured icon image elements, the elements would produce a either a [sic] glitter effect or a diffuse scattering effect, depending on the degree of randomisation of the orientation of the facets. To provide a glitter effect, the orientation of the facets would need to have a small range of randomisation. A larger range of randomisation of orientations of the facets would result in a diffuse scattering effect, instead of a glitter effect.”[28]
Innovia’s reliance on this evidence is clearly misconceived. It was put forward in support of the assertion that document D1 deprived claim 15 of novelty, not that it was commonly known in the art to use reflective facets to produce a glitter effect. In any event, such an effect is as I have said earlier not a feature of the independent claims.
[28] Lee at [39]

100. This brings me to the matters noted in point (a) (viz. features 1.1 to 1.4 of claim 1). Mr Pereire drew my attention here to the following documents:

Lee, ‘Micro mirror array nanostructures for anti-counterfeiting applications’, SPIE Vol 5310 c. 2004 (document D13)[29]; and

Document D19.
[29] Lee RAL-15

101. Document D13 is a scientific paper published by Dr Lee. The paper describes how the optical characteristics of pixellated passive micro mirror arrays are derived and applied in the context of their use as reflective optically variable device (OVD) nanostructures for the protection of documents from counterfeiting. At page 356, the paper explains that “a typical micro mirror OVD image may be comprised of up to a million micro mirror pixels selected from a palette of a limited number of pixel types and distributed across the OVD surface according to the required picture information”. Page 359 includes a table which sets out the different mechanisms for achieving particular optical effects within a reflective OVD. The table relevantly contains the following information:

Optical Property Reflective Pixel OVD

Palette structure Comprised of a finite set of micro mirror pixels of different mirror angles, curvature and orientations

Multi-channel image switching Produced by using adjacent micro mirrors of different slope angles

102. So far as document D19 is concerned, on my understanding Mr Pereire’s reliance on this document was limited to the disclosure on page 205 of so-called “blazed gratings”. These are said to be relief-type gratings with an asymmetric saw-toothed cross section such that images composed of blazed gratings can show striking contrast changes when the image is rotated in its own plane over 180^o. Figure 6.41, for example, shows how a positive to negative contrast swap can be produced by rotation of the blazed grating.
103. Dr Lee adds that:

The paper by Gregory et al, ‘Random facet Fresnel lenses and mirrors’, Optical Engineering 40(5) (May 2001) 713-719 (document D20)[30] establishes that the use of randomly oriented lenses and mirrors was well known in the industry[31]; and

It was routine in high resolution optically variable devices using micro mirrors for the area of each micro mirror to be smaller than the area of the reflective areal region preferably by at least one order of magnitude.[32]
[30] Lee RAL-22
[31] Lee at [24]
[32] Lee at 25.2

104. I pause here to observe that, on the one hand, Innovia has treated the information contained in documents D1, D2, D13, D19 and D20 as sources of common general knowledge and, on the other hand, as qualifying as section 7(3) information.[33] The same situation arose in Dyno Nobel Asia Pacific Ltd vOrica Australia Pty Ltd [1999] FCA 1369 where it was said at [186]:
“… I take the reference to the second 1979 report in the applicants' outline to be an erroneous description of the 1982 report from the US Bureau of Mines which is also considered to be a relevant prior art document. In any event, Mr Bellairs considers that the 1982 report was commonly known in the industry at the priority ... I accept that evidence. There is no doubt that a skilled worker would understand and regard it as relevant to his or her work. That is sufficient to satisfy the test prescribed in par 7(3)(a). It also places the report within common general knowledge for the purposes of subs 7(2) so that its status as a prior art document is irrelevant.”
[33] Innovia outline of submissions at [93]; Lee at 22.1

105. Returning now to the present case, I have to this point determined that the contents of document D19, but not documents D1 and D2, fall within the common general knowledge. That leaves me to consider the status of documents D13 and D20, both of which are scientific papers. As stated in British Acoustic Films Ltd v Nettlefold Productions 53 RPC 221 at 250 (and cited with approval in Ranbaxy Laboratories Ltd v AstraZeneca AB [2013] FCA 368; 101 IPR 11 at [217]):
“In my judgment it is not sufficient to prove common general knowledge that a particular disclosure is made in an article, or series of articles, in a scientific journal, no matter how wide the circulation of that journal may be, in the absence of any evidence that the disclosure is accepted generally by those who are engaged in the art to which the disclosure relates. A piece of particular knowledge as disclosed in a scientific paper does not become common general knowledge merely because it is widely read, and still less because it is widely circulated. Such a piece of knowledge only becomes general knowledge when it is generally known and accepted without question by the bulk of those who are engaged in the particular art; in other words, when it becomes part of their common stock of knowledge relating to the art’.”

106. No evidence has been led by Innovia to substantiate that either of documents D13 and D20 had been widely read or even widely circulated, let alone that their disclosure “is accepted generally by those who are engaged in the art to which the disclosure relates”.
107. In the result I find that, with the exception of document D19, the documents brought to my attention by Innovia do not constitute sources of common general knowledge. Even if I were to assume otherwise, these documents would go no higher than confirming, as variously characterised by Dr Lee, that:
·the concept of randomising micro mirror spacing was well known in the industry;[34]
·it was routine in high resolution optically variable devices using micro mirrors for the area of each micro mirror to be smaller than the area of a reflective areal region preferably by at least one order of magnitude;[35] and
·it was commonly known to use a random orientation of reflective structures.[36]
[34] Lee at [24]
[35] Lee at [25.2]
[36] Lee at [110]

108. Dr Lee has asserted, at least so far as concerns the concept of random micro mirror orientation, that the teaching of document D20 “can be extended to optically reflective facets without any inventive step”. However, while this assertion may be of relevance to the ultimate question of whether the invention as claimed is obvious, it does not substantiate the case put by Innovia that features 1.1 to 1.4 had entered the realm of common general knowledge. It is also worth mentioning that this evidentiary shortcoming becomes even more noticeable when regard is had to features 1.5 and 1.6.
Section 7(3) information
109. Innovia submits that the information contained in all twenty-two documents itemised in the statement of grounds and particulars is prior art information for the purposes of section 7(3). It relies here on the following general endorsement regarding section 7(3) ascertainment by the Full Court in Commissioner of Patents v Emperor Sports Pty Ltd [2006] FCAFC 26 (Emperor Sports) at [34]:
“The Australian Patent Office Manual of Practice and Procedure says (par 4.2.5.1):
‘Examiners should generally proceed on the basis that it would be reasonably expected that the person skilled in the art would conduct a search of patent literature, including the patent specifications of major countries, and that [subject to certain exceptions not relevant for present purposes] any patent document located in a patentability search would reasonably be expected to be ascertained by the person skilled in the art.’

We would not wish to cast any doubt on the general correctness of that statement.”

110. G&D objects that it is not reasonable to have such an expectation in the present circumstances. It points to the fact that while Dr Lee states that he was aware of some of the particularised documents,[37] these documents appear in large part to have been unknown to him. Specifically, Dr Lee simply deposes in relation to document D1 that he “immediately recognised one of the inventors listed on this document … who I have met on various occasions before the priority date”, and in relation to document D2 that “I was aware of [the applicant], and some of their work on lens and diffractive security devices before the priority date”.[38] Dr Lee does not say anything on whether he was at all familiar with document D21.
[37] For example, Lee at [22.9]
[38] Lee at [22.2]-[22.3]
111. This places documents D1, D2 and D21 in a curious position since it seems from his evidence that Dr Lee had not come across them in the course of his research. However, once it is accepted, as I do, that in his capacity as an appropriately skilled worker Dr Lee could be reasonably expected to keep up to date with relevant patent material, it is difficult to see why he cannot also be reasonably expected to have ascertained the existence of documents D1, D2 and D21 (all of which are patent documents) if conducting a search for patent material in his field of expertise.
112. The particularised documents also include non-patent material. However, it is not necessary for me to say anything on whether this material is ascertainable. On my reading, Innovia has restricted its reliance on section 7(3) information to documents D1, D2 and D21.
Is the claimed invention obvious?
113. Innovia contends that the invention as claimed does not involve an inventive step when any one of documents D1, D2 and D21 is combined with common general knowledge.[39]
[39] Innovia outline of submissions at [95], [100]-[104]
114. It is convenient to begin my consideration of this question with reference to document D21. This document relates to a display which can be used for forgery-prevention of articles such as cards, securities and brand-name products and which displays an image by utilising light-scattering. Innovia concedes that while document D21 discloses a random arrangement of light scattering structures, it does not appear to disclose a random orientation of those structures (emphasis added).[40] However, Innovia says that “this difference would have been obvious at the priority date [sic]” given the alleged common usage of randomly oriented reflective structures.
[40] Innovia outline of submissions at [104]; Lee at [110]
115. This broad-brush approach by Innovia fails to recognise that it has not proven that any of the features of the claimed invention, particularly those relating to the orientation of the reflective facets, are common general knowledge. At a more fundamental level, it omits the fact that as indicated by Dr Rahm:
“… is apparent to me that [document D21] relates to light scattering structures rather than to reflective facets and does not disclose or suggest the subject-matter of the invention claimed in claim 1.”[41]
[41] Rahm at [14]

116. The same difficulties confront Innovia with regard to documents D1 and D2. I have found under the heading of novelty that the invention as claimed departs in a number of significant respects from the disclosure of these documents. Regardless of its assertions as to the state of the common general knowledge, what Innovia has in effect argued is that the skilled person would as a matter of routine completely transform the essential character of the subject matter of documents D1 and D2 to thereby arrive at the claimed invention. In the present context, such an argument is clearly untenable.
117. In light of these reasons I find that the claimed invention does involve an inventive step. This ground of opposition therefore does not succeed.
Section 40 issues
118. According to sections 40(2) and (3) as they were before the commencement of the RTB Act:
“(2) A complete specification must:
(a) describe the invention fully, including the best method known to the applicant of performing the invention; and
(b) where it relates to an application for a standard patent - end with a claim or claims defining the invention; and
(c) where it relates to an application for an innovation patent - end with at least one and no more than 5 claims defining the invention.

(3) The claim or claims must be clear and succinct and fairly based on the matter
described in the specification.”

Section 40(2)(a)
119. Innovia submits that the specification does not describe fully how the facets of different pixels are oriented so as to have a “substantially random orientation around different average orientations in a region-based manner” in accordance with claim 1. I am not persuaded by this submission.
120. Section 40(2)(a) imports the requirement of sufficiency of disclosure. The test for assessing sufficiency was expressed by the High Court in Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8; 207 CLR 1 at [25] as:
“... will the disclosure enable the addressee of the specification to produce something within each claim without new inventions or additions or prolonged study of matters presenting initial difficulty?”

121. As further explained in SNF (Australia) Pty Ltd v Ciba Speciality Chemicals Water Treatments Ltd [2011] FCA 452; 92 IPR 46 (SNF) at [234]:
“A specification is not insufficient merely because some experiment of a routine character (as distinct from prolonged study of matters presenting initial difficulty) is necessary in the particular case ... Nor is a specification insufficient because it fails to give detailed instructions as to matters which a ‘practical person ... would naturally settle, and expect to have to settle ... himself’, provided he ‘would find no difficulty in so doing’”.

122. And then (with citations omitted):
“… [A]lthough the specification must disclose the method of carrying out the invention, and not merely the result to be obtained, any general description is enough if in fact the desired result can be obtained with certainty and without invention. Thus a general instruction to use ‘any suitable material’ or ‘known methods’ or to use chemical reagents of a general class (leaving it to the addressee to determine which members of the class will operate satisfactorily), will be sufficient if it enables the addressee to put the invention into practice ... Nor will vagueness or obscurity of instructions render the specification insufficient if an addressee would have no serious difficulty in understanding what he had to do.”

123. It was further said in SNF at [225] that “[s]ufficiency is a question of fact, to be determined, if possible, by reference to the evidence of the addressees of the specification.”
124. Innovia’s submission as to lack of sufficiency appears to have overlooked the disclosure of the present specification at, for example, [0013] and [0098] where it is explained how the facets may be randomly oriented. In any event, it is most notable that the evidence given by Innovia’s own expert, Dr Lee, does not contain any suggestion that in following the instructions provided by the specification a skilled addressee seeking to perform the invention would need to engage in prolonged experimentation beyond the routine in order to achieve a random facet orientation in accordance with claim 1. To the contrary, Dr Lee’s evidence as it relates to his understanding of the specification is clearly supportive of the view that it contains sufficient information to enable the addressee to put the invention into practice without undue difficulty.
125. This ground of opposition accordingly does not succeed.
Section 40(2)(b)
126. Innovia has submitted (with original emphasis) that:

claims 1 and 20 do not define how different average orientations (around which the orientations facets [sic] of different pixels that have a random variation) are predefined in a region based manner;

claim 11 does not define how the average orientations of the pixels of the at least two portions are predefined; and

claims 15 and 21 do not define how the facets are arranged to provide the glitter effect.

127. I do not understand the relevance of this submission. The requirement that a complete specification end with a claim or claims “defining the invention” simply raises the question of whether the claims fulfil their statutory purpose of defining the monopoly for which protection is sought (AMP Inc v Utilux Pty Ltd 45 ALJR 123 at 128). It is self-evident that the present claims serve this purpose and, accordingly, this ground of opposition does not succeed. However, Mr Pereira agreed that the issues set out above could be appropriately dealt with under the ground of lack of clarity.
Section 40(3)
128. Innovia submits that the claims do not satisfy any of the requirements of section 40(3). However, no explanation has been provided as to why the claims allegedly lack succinctness and fair basis, and nor in my opinion are the claims deficient in either respect. I therefore reject this aspect of Innovia’s submission.
129. As concerns their purported lack of clarity, the requirement for the claims to be clear does not mean that they must be couched in language which is precise or absolute. As noted for example in Flexible Steel Lacing Company v Beltreco [2000] FCA 890; 49 IPR 331 at [81] (and cited with approval in Austal Ships Sales Pty Ltd vStena Rederi [2008] FCAFC 121; 77 IPR 229):
“Lack of precise definition in claims is not fatal to their validity, so long as they provide a workable standard suited to the intended use … the consideration is whether, on any reasonable view, the claim has meaning … In determining this, the expressions in question must be understood in a practical, common sense manner … Absurd constructions should be avoided … and mere technicalities should not defeat the grant of protection …”

130. It seems to me that in attempting to support its case on lack of clarity, Innovia has relied on an overly meticulous verbal analysis of the claims which is an approach that has been consistently repudiated by authority (Lockwood Security v Doric Products (No 1) [2004] HCA 58; 217 CLR 274 at [68], Product Management Group Pty Ltd v Blue Gentian LLC [2015] FCAFC 179 at [272], Catnic at 243). The correct approach instead involves a practical determination of whether the skilled addressee can understand what acts fall within the scope of the claims.
131. It is therefore significant to my mind that Dr Lee has not expressed any difficulties in assigning a clear meaning to the claims. For the sake of completeness, I fail to see why, for example, the terms “predefined” and “the maximum extent of a pixel” can be said to suffer from ambiguity when read in the context in which they appear, while it is plain enough that the “certain regions” of claims 8, 9 and 18 need not be the same. Furthermore, the alleged lack of clarity of claims 18 and 19 can in my opinion be sensibly resolved by construing them as depending from claim 17 which is the only claim that explicitly includes a security element based on magnetically aligned pigments.
132. This ground of opposition therefore does not succeed.
Conclusion
133. I have found that the opposition does not succeed on any of the grounds relied on. The opposition is therefore dismissed.
Costs
134. The parties are agreed that costs should normally follow the event. However, Innovia has pointed out that G&D did not seek to amend the accepted specification until after it was in receipt of the evidence in support. Innovia submits this indicates that “the opposition to the originally accepted claims has been successful”, and requests that costs be apportioned accordingly.[42]
[42] Innovia outline of submissions at [118]
135. G&D has argued in response that “the claims were distinguished from the prior art both prior to and after the amendment”.[43] I agree. So far as is relevant, the effect of the amendments was to change (as shown in italics) the wording of feature 1.6 of claim 1 as follows:
“wherein the orientations of the facets of different pixels have a substantially random variation around different average orientations predefined in a region-based manner, resulting in regionally different average reflection directions of the pixels.”
[43] G&D outline of submissions at [78]

136. It is clear that my findings on novelty and inventive step in favour of G&D were not influenced by these changes.
137. I therefore consider it appropriate to award costs solely against Innovia.
O L Haggar
Delegate of the Commissioner of Patents

Optical Property	Reflective Pixel OVD
Palette structure	Comprised of a finite set of micro mirror pixels of different mirror angles, curvature and orientations
Multi-channel image switching	Produced by using adjacent micro mirrors of different slope angles