Innovia Security Pty. Ltd. v Giesecke & Devrient GmbH
[2016] APO 11
•3 March 2016
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Innovia Security Pty. Ltd. v Giesecke & Devrient GmbH [2016] APO 11
Patent Application: 2010327031
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: Dr W.E. Guinea
Decision Date: 3 March 2016
Hearing Date: 2 February 2016, in Canberra
Catchwords: PATENTS - section 59 – opposition to the grant of a patent –– novelty – inventive step – full description – claims do not define the invention – clarity – fair basis – opposition fails on all grounds
Representation: Patent applicant: FB Rice
Opponent: John Roger Green and Nigel Eugene Pereira, both of Watermark Patent and Trade Marks Attorneys, with
David Ian Lindsay of Innovia Security Pty. Ltd.
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2010327031
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: 3 March 2016
DECISION
None of the grounds of opposition are made out. The opposition is unsuccessful. Costs are awarded against the Applicant according to Schedule 8 of the Regulations up to the date the amendments were allowed, with costs from the date the amendments were allowed awarded against the Opponent according to Schedule 8 of the Regulations. Subject to appeal, I direct that this application proceed to grant.
REASONS FOR DECISION
Background
Patent application 2010327031 (“the opposed application”) entered national phase in Australia on 30 May 2012 from PCT application PCT/EP2010/007368.
Giesecke & Devrient GmbH (“the Applicant”), requested examination on 10 December 2012, and the opposed application was advertised as accepted on 17 July 2014.
A notice of opposition was filed by Innovia Security Pty. Ltd. (“the Opponent”) on 17 October 2014. The Opponent filed a statement of grounds and particulars (“SGP”) on 19 January 2015.
Evidence in support (“EIS”) was filed on 17 April 2015. This comprised:
· a statutory declaration by Dr Robert (Bob) Arthur Lee (“Lee”) with supporting exhibits RAL-1 to RAL-19.
The Applicant filed proposed amendments to the claims on 19 June 2015. These were subsequently allowed on 3 November 2015.
Evidence in answer (“EIA”) was filed on 16 July 2015. This comprised:
· a statutory declaration by Dr Michael Rahm (“Rahm”);
· a statutory declaration by Professor Robert Brunner (“Brunner”) with supporting exhibits RB-1 to RB-3; and
· a statutory declaration by Mr Jeremy Michael Mark Dobbin (“Dobbin”) with supporting exhibits JMD-1 and JMD-2.
No evidence in reply (“EIR”) was filed.
A hearing for this matter was set for 2 February 2016. On 11 January 2016 the Applicant advised that they would not appear at the hearing and would file written submissions only (“the Applicant’s submissions”). The Applicant’s submissions were filed on 25 January 2016, subsequent to the Opponent’s written submissions (“the Opponent’s written submissions”) filed on 18 January 2016.
The Opponent requested amendment of the SGP on 9 February 2016 (“SGP amendments”), with the Applicant responding to this on 24 February 2016 (“the Applicant’s SGP submissions”). The SGP amendments were allowed on 26 February 2016.
The Invention as Described
10. The specification deals with a security element for securing an item of value, such as bank notes, passports, ID cards and the like, and a method of manufacturing the same. In operation the security element is affixed to or manufactured in the surface of the item of value to be secured, here generally called the “carrier”. Specifically the security element provides the illusion that the area where it is located protrudes or recedes in comparison to the actual profile of the area. For example if the area in reality comprises a flat surface, then the security element can provide the illusion that the surface is concave or convex in nature.
11. The nature of the security element is best explained via figure 3 of the opposed application, which is reproduced below.
In figure 3 a sectional view of a sawtooth grating of pixels 41, 42, 43, 44, 45, 46 (delimited by the vertical dashed lines) are formed in the surface 7 of a carrier 8. Each pixel comprises one or more reflective facets 5. As can be seen on figure 3, the pixels 41, 42, 44, 45, 46 each have several reflective facets 5 having the same orientation. The orientation of the facets is such that incident light L1 actually seems as though it is reflected from a virtual surface 9; that is it appears to an observer to be light L2 incident on a surface 9. Noting that the reflective facets 5 are microscopic in nature, the macroscopic spatial form that would otherwise be apparent to an observer, in the absence of the effect of the reflective facets 5, is a flat surface. Instead the viewer perceives that the surface 7 has the profile given by 9 in figure 3. This clearly demonstrates the effect of the invention.
I note that the claims, while reflecting the nature and effect of invention, are more general in nature and are not necessarily limited to the embodiment I have discussed above.
The Opposed Claims
The claims prior to amendment comprised some 20 claims, with claims 1 and 19 being the only independent claims. The amendments resulted in two minor changes to the description by inserting the wording “wherein the dimensions of the optically active facets are between 3µm and 300µm” at [6] and [49]. The same feature was also amended into independent claims 1 and 19 so that these now read as below:
“1. A security element for a security paper, comprising:
a carrier having an areal region which is divided into a multiplicity of pixels which respectively comprise at least one optically active facet, wherein the dimensions of the optically active facets are between 3µm and 300µm
the majority of said pixels respectively having several optically active facets of identical orientation per pixel, and
said facets being so oriented that the areal region is perceptible to a viewer as an area that protrudes and/or recedes relative to its actual spatial form.
19. A method for making a security element for security papers wherein:
a surface of a carrier is so height-modulated in an areal region that the areal region is divided into a multiplicity of pixels respectively having at least one optically active facet, wherein the dimensions of the optically active facets are between 3µm and 300µm
the majority of the pixels respectively have several optically active facets of identical orientation per pixel, and
said facets are so oriented that the areal region is perceptible to a viewer of the security element as an area that protrudes and/or recedes relative to its actual spatial form.”
The Opposition
In the SGP the Opponent pursued grounds under:
· s18(1)(b)(i) – the invention as claimed is not novel;
· s18(1)(b)(ii) – the invention as claimed in does not comprise an inventive step;
· s40(2)(a) – the specification does not describe the invention fully, including the best method of performing the invention;
· s40(2)(b) – the specification does not end with claims defining the invention; and
· s40(3) – the claims are not fairly based on matter described in the specification and that the claims are not clear and succinct.
All the above grounds were pressed in the Opponent’s written submissions and at the hearing.
I note that during the course of the opposition the Opponent has introduced a document (D17: WO 1998/08131) that was not particularised in the SGP. I bought this to Mr Green’s attention at the hearing and suggested that he may wish to consider amending the SGP such that it particularised D17. This lead to the SGP amendments, which proposed changes to the SGP in line with my suggestion, as well as adding other additional particulars. For the benefit of any doubt I have considered D17 in writing this decision given that it has been introduced into evidence by the Lee declaration as exhibit RAL-11, has been responded to by the Applicant in both EIA and in the Applicant’s submissions, and has now been particularised in the SGP.
In relation to the SGP amendment, I have noted the Applicant’s arguments in their SGP submissions with respect to the amendment of the SGP and costs. However as nothing turns on the SGP amendments, as will be seen below, it is unnecessary to consider the Applicant’s submissions on costs in this regard.
Onus of Proof
As examination commenced prior to 15 April 2013, the changes brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 do not apply to the opposed application. As such the previous burden of proof applies to this opposition, namely that the opponent will only succeed if they can convince the Commissioner that it is clear or practically certain that the patent is invalid; see F Hoffman La Roche AG v New England Biolabs Inc [2000] FCA 283 at [29], [67]; [2000] FCA 283; 50 IPR 305 at 311, 319; Commissioner of Patents v Sherman [2008] FCAFC 182 at [18], [22]; [2008] FCAFC 182; 79 IPR 426; Genetics Institute Inc v Kirin-Amgen Inc [1999] FCA 742; [1999] 92 FCR 106 at [17].
Clarity
The statutory basis for clarity is given at s40(3) of the 1990 Act which states that the claims must be clear and succinct. The requirement for the claims to be clear does not mean that terms used in claims must be precise or absolute, as noted in Flexible Steel Lacing Company v Beltreco Ltd [2000] FCA 890 at [81]; (2001) 49 IPR 331 at 349 (and cited with approval in Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag [2008] FCAFC 121; (2008) 77 IPR 229) (“Austal Ships”):
“Lack of precise definition in claims is not fatal to their validity, so long as they provide a workable standard suitable 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, commonsense manner… Absurd constructions should be avoided…and mere technicalities should not defeat the grant of protection...”
Where terms in claims are unclear, recourse may be made to the specification to resolve the ambiguity; see Interlego AG v Toltoys Pty Ltd [1973] HCA 1 at [14]; (1974) 130 CLR 461 at 479:
“If the expression is not clear it is then permissible to resort to the body of the specification to define or clarify the meaning of words used in the claim without infringing the rule that clear and unambiguous words in the claim cannot be varied or qualified by reference to the body of the specification…”
The Opponent’s Clarity Arguments
In their submissions the Opponent asserts that claims 1, 11 and 19 are unclear. In addition to these claims the Opponent also asserted at the hearing that claim 15 was unclear. I will consider these arguments below.
Claims 1 and 19
In their written submissions at [154] the Opponent states that:
“The phrase 'said facets being so oriented that the areal region is perceptible to a viewer as an area that protrudes and/or recedes relative to its actual spatial form' as recited in claims 1 and 19 is unclear. Claims 1 and 19 do not describe the features or means that allow this result to be achieved. It is not clear what the orientations of the facets need to be to achieve this result.”
I do not consider that either of claims 1 and 19 are unclear. I take the phrase to mean that an effect is generated whereby a surface appears to be bulged and/or depressed with respect to the actual spatial form of the area, as exemplified (but not limited to) in figure 3 of the opposed application. No ambiguity is apparent on reading this feature in the context of the claim. Consequently I am satisfied that this feature of claims 1 and 19 is clear.
In addition I note that none of the expert declarants have expressed confusion as to what is meant by this feature. Indeed both Dr Lee (Lee [24.2]) and Professor Brunner (Brunner [4] and [5]) both indicate that they understand claim 1 to be defining a type of 3D effect, in line with the construction that I have given above.
For completeness I also note that Dr Lee uses similar language at Lee [24.3] as at [154] of the Opponent’ submissions, however this criticism appears to be more that the opposed application does not provide sufficient information to the skilled addressee so as to ensure that the facets have the required orientation. Such arguments are more pertinent to an alleged lack of full description, rather than an attack on the clarity of the claims.
At [155] of their written submissions the Opponent states that:
“Claim 1 as amended lacks clarity. It is not clear which dimensions of the facets, eg the length, the width or the height of the facets, must be between 3μm and 300μm to fall within the scope of the claim. It might be possible, for instance, for the width of the facets to be less than 3μm and the length of the facets to be greater then 3μm, eg as in the lines of a diffraction grating. It might also be possible for width and/or length of the facets to be less than 3μm and the height of the facets to be greater then 3μm. Without further definition of 'the dimensions of the facets' amended claim 1 is ambiguous and lacks clarity.”
It is important to note here that claim 1 as amended states that “the dimensions of the optically active facets are between 3μm and 300µm” (emphasis added). A plain reading of this indicates that all three physical dimensions are restricted to the range indicated. There is no reason to believe that the claim intends the restriction to only apply to perhaps one or two physical dimensions, but not the remaining dimension(s). This is also apparent from the opposed application; see for example [7], [18] and [34]. Consequently I am satisfied that this feature of claims 1 and 19 is clear.
In conclusion I am satisfied that claims 1 and 19 are clear.
Claim 11
At [156] of their written submissions the Opponent states that claim 11 is unclear because it:
“…recites that the facets form a periodic or aperiodic grating, and the grating period of the facets is between 1μm and 300μm. These dimensions are not consistent with the dimensions of the optically active facets that have been incorporated into claim 1. In addition, this claim is not consistent with claim 5, which describes that 'the optically active facets are so configured that the pixels have no optically diffractive effect'. Because a grating with small grating periods of the order of 1μm to 10μm would result in an optically diffractive effect claim 11 is inconsistent with claim 5.”
I first note that it is not a requirement of Australian law that dependent claims narrow the scope of independent claims; see Austal Ships at [47]. In this light claim 11 (when appended to any one of claims 1 to 4 and 6 to 10) can be seen as broadening the possible range of the pitch of the facets, when the facets are implemented as a grating, to 1µm to 300µm. The other dimensions of the facets remain in the 3µm to 300µm range. I therefore see nothing unclear about claim 11 when appended to claims 1 to 4 and 6 to 10.
Claim 5 imports a requirement that “...the optically active facets are so configured that the pixels have no optically diffractive effect”. It is apparent that this will have a narrowing effect on the dimensions of the facets to the extent that the width or pitch of the facets will need to be somewhat greater than the 3µm lower limit of claim 1 in order to meet the requirement of no optically diffractive effect, as attested at Lee [34]. Similarly claim 11 when appended to claim 5 will in reality comprise a pitch that at least is somewhat greater than the 1 µm that is listed so as to achieve pixels with no optically diffractive effect. I therefore see nothing unclear about claim 11 when appended to claim 5. Consequently I am satisfied that claim 11 is clear.
Claim 15
Although not directly raised in the Opponent’s written submissions, Mr Green submitted at the hearing that claim 15 was unclear for the reasons given by Dr Lee in his declaration. Claim 15 is as follows:
“15. The security element according to any one of the preceding claims, wherein the areal region is perceptible to a viewer as an imaginary area whose reflection behavior or transmission behavior cannot be produced with a real bulged reflective or transmissive surface, and the areal region is perceptible as a rotating mirror.”
Dr Lee discuses claim 15 at [38] of his declaration:
“Claim 15 depends from any one of the preceding claims, wherein the areal region is perceptible to a viewer as an imaginary area whose reflection behavior or transmission behavior cannot be produced with a real bulged reflective or transmissive surface, and the areal region is perceptible as a rotating mirror. I consider that this claim covers that the image appears as a virtual mirror above the plane of the security paper. However, it is not clear how the areal region is perceptible as a rotating mirror. In any case, I note my paper on 'Optically variable micro-mirror arrays fabricated by graytone lithography' (Exhibit RAL-15) described movement effects around a circle produced by micromirrors pixels at different angles, which is a form of rotating mirror.” (emphasis in original)
It is apparent that claim 15 is not simply restricted to a virtual mirror of any sort - it need be one that cannot be replicated by a real bulged reflective or transmissive surface. In this sense claim 15 is narrower than as suggested by Dr Lee. I consider that this feature simply defines an effect that causes movement of an image upon variation of the viewing or illumination angles. This is consistent with the explanation of this feature as given in the specification at [36] to [38].
In addition I note that based on Dr Lee’s reference to RAL-15 and his brief explanation thereof, it would seem that Dr Lee has no difficulty in construing this feature as I have done above. Again it would seem that Dr Lee’s criticisms are more pertinent to an alleged lack of full description, rather than a lack of clarity.
In conclusion, I am satisfied that claim 15 is clear.
Clarity – Conclusion
I am satisfied that all the claims are clear. The Opponent has failed to make out this ground of opposition.
Novelty
The test for determining novelty is often expressed in the form of the reverse infringement test as given in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20]; (1977) CLR 228 at page 235; 13 ALR 605 at page 611 (“Meyers Taylor”):
“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.”
In determining whether a disclosure comprises an infringement, it is convenient to consider the principles laid down in General Tire & Rubber Company v The FirestoneTyre and Rubber Company Limited [1972] RPC 457 at pages 485-486) (“General Tyre & Rubber”) as to what a skilled addressee would do based on the disclosure in question:
“…if carrying out the directions contained in the prior inventor's publication will inevitably result in something being made or done which, if the patentee's patent were valid, would constitute an infringement of the patentee's claim, this circumstance demonstrates that the patentee's claim has in fact been anticipated ... To anticipate the patentee’s claim the prior publication must contain clear and unmistakeable 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.”
In determining whether prior art under s7(1) comprises a novelty destroying disclosure, it is not necessary that the prior art discloses all the features of the claims under consideration, as long as the missing features are not essential features. The question of whether a feature is essential or inessential does not arise where the features concerned have a material effect upon the way the invention works. This was outlined in Catnic Components v Hill and Smith Ltd(1982) RPC 183 (“Catnic”) at 243:
“The question in each case is: whether persons with practical knowledge and experience of the kind of work in which the invention was intended to be used, would understand that strict compliance with a particular descriptive word or phrase appearing in a claim was intended by the patentee to be an essential requirement of the invention so that any variant would fall outside the monopoly claimed, even though it could have no material effect upon the way the invention worked.
The question, of course, does not arise where the variant would in fact have a material effect upon the way the invention worked.”
Consideration of Novelty in view of the Prior Art
At the hearing, and in their written submissions at [37] to [126], the Opponent alleged lack of novelty against several claims based on US 2008/0258456, US 5105306, WO 2006/013215, US 5301062 and WO 98/08131. I will consider these below.
US 2008/0258456 (D1)
D1 relates to an optically variable security element for securing valuable articles. Broadly speaking D1 uses a series of micromirrors to achieve different optical effects. In some embodiments these micromirrors are grouped into pixels so as to create an image.
The Opponent outlines their novelty arguments in view of D1 at [37] to [63] of their written submissions, where it is alleged that claims 1, 2, 3, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 17, 18, 19 and 20 lack novelty in view of D1. For convenience I will confine myself to initially discussing claims 1 and 19.
Although a number of different embodiments are disclosed in D1, ultimately the following feature of claims 1 and 19 is not disclosed in D1:
“…said facets are so oriented that the areal region is perceptible to a viewer of the security element as an area that protrudes and/or recedes relative to its actual spatial form…”
In their written submissions at [43] to [47] the Opponent points to two embodiments in D1 said to disclose this particular feature, these being respectively exemplified in figures 9 and 11 of D1. I will consider each of these embodiments below.
Figure 9
Figure 9 is reproduced below, along with [0070] which explains figure 9.
“[0070] One application of a security element according to the present invention as a label 140, as may be used, for example, on bottles or cans for upscale foods, is shown in FIG. 9. The security element 140 includes a plurality of micromirrors that are disposed in the form of a crest 142. The micromirrors can exhibit a simple relief shape having a single reflection plane that is tilted against the surface of the label. In the exemplary embodiment, the characteristic parameters of the micromirrors are chosen such that, when the security element is illuminated from above and at an angle, all micromirrors of the crest 142 reflect the incident radiation vertically ahead. Here, since the radiation impinges on the label 140 at different angles of incidence, the micromirrors exhibit appropriately different tilt angles of their reflection area α=α( ϕ) at different locations along the span. If one sways the bottle or can having the security element 140 back and forth in the hand, then the previously inconspicuous crest 142 flashes brightly in a certain position.”
Dr Lee’s statements on the disclosure of D1 at Lee [46.4] closely mirror [43] of the Opponent’s written submissions, but go no further in explaining the actual effect apparent to the viewer as a result of the device of figure 9. I also observe that at the hearing Mr Green supplied me with an exhibit that purportedly demonstrates the effect of the security element 140, but this provides little more detail than what can be gleaned from Dr Lee’s evidence. Consequently the Opponent’s arguments appear to be founded on [0070] disclosing that the micromirrors collectively form a single reflection plane which at a particular direction reflects incident light vertically ahead. This is said by the Opponent to result in “…parts of the flat plane of the crest that the observer sees will appear to protrude and/or recede relative to the actual spatial form of the curved bottle on which the crest is formed” (the Opponent’s written submissions at [44]).
I note that Dr Rahm and Professor Brunner both refer to the micromirrors of figure 9 simulating or comprising a flat reflection surface (Rahm [9] and Brunner [32]), and therefore they appear to agree with Dr Lee in this regard. However both Dr Rahm and Professor Brunner consider that in reality a viewer will not see a flat crest, as asserted by the Opponent and Dr Lee. Both Dr Rahm and Professor Brunner have supplied considerable arguments to support their assertions in this regard; see Rahm [8] to [11] and Brunner [26] to [34], in contrast to the plain assertion made by Dr Lee. The upshot of these arguments is that a viewer will not perceive that the “bright crest” protrudes or recedes relative to the curved surface of the bottle or can, a point clearly made by Dr Rahm at [11] of his submissions:
“The effect looks like if somebody had "switched the light on", but the observer will not have the impression of the crest protruding from the curved surface. There is no reason why the crest should appear to protrude or recede from the label, just because it becomes bright at a certain angle of observation.”
The Opponent at [44] of their submissions suggests that both Dr Rahm’s and Professor Brunner’s evidence is contradictory as they apparently acknowledge that the viewer will see a flat reflecting plane. The Applicant suggests in their submissions at [31] and [32] that Dr Rahm and Professor Brunner have been taken out of context and that their references to a “flat reflecting plane” and “flat reflecting surface” are in reality to a simulated “flat reflecting plane” and a simulated “flat reflecting surface”. While these statements by Dr Rahm and Professor Brunner are slightly confusing I agree with the Applicant. The meaning of the passages from Dr Rahm and Professor Brunner, when read as a whole, cannot be mistaken and one concludes from them that a viewer will simply see a “bright crest” in one particular direction or narrow range of directions and an inconspicuous crest at all other directions, with no suggestion of any protruding or receding relative to the spatial form of the bottle or can.
In view of the above I consider that the weight of evidence demonstrates that figure 9 does not disclose that “said facets are so oriented that the areal region is perceptible to a viewer of the security element as an area that protrudes and/or recedes relative to its actual spatial form.” I am therefore satisfied that figure 9 does not deprive claims 1 and 19 of novelty. It follows that the dependent claims are also novel over the disclosure of figure 9.
Figure 11
I have reproduced figure 11 below, along with [0073] and [0074] which explain figure 11.
“[0073] In addition to the direct viewing of the security elements treated thus far, also embodiments may be used in which the viewer views, not the image area provided with micropatterns itself, but rather a collection screen of suitable geometry onto which the micropattern projects the desired image motif upon suitable illumination. For illustration, FIG. 11 shows a banknote 160 having an inventive security element having a micromirror array 162. Here, the micromirror array 162 is designed for projection onto a collection screen 164 that is disposed perpendicularly to the banknote 160. The characteristic parameters of the micromirrors 162 are thus chosen such that, upon vertical illumination 166, they project the prechosen motif undistorted onto such a collection screen 164.
[0074] In the design shown, the projected motif can also be perceived-even if more faintly or distorted-when a collection screen is somewhat displaced or tilted. In other embodiments, the micromirrors can also be so coordinated with each other that the reflected beams of spaced micromirrors intersect at certain points such that the motif encoded in the micromirror array 162 can be read out only with a collection screen of suitable geometry in a fixed, predefined spacing.”
The Opponent asserts in their written submissions at [46] that:
“The micromirror array is designed for projection onto a collection screen that is disposed perpendicularly to the banknote. The projected motif can also be perceived when a collection screen is somewhat tilted. We refer to paragraphs [0073] to [0074] and Figure 11 of D1. Therefore, in this embodiment, the image that is projected on the collection screen is perceptible as an area that protrudes relative to its actual spatial form.”
This submission closely resembles Dr Lee’s evidence with respect to figure 11 at [46.5] of his declaration. The basis of the Opponent’s arguments appear to be that projecting an image of an area, in the sense of casting it onto a screen or the like so it can be viewed in the manner of figure 11, is equivalent to viewing the area as an area that protrudes relative to the actual spatial form of the area.
In contrast, at [39] of their submissions the Applicant states that:
“The opponent refers to paragraphs [0073] and [0074] of D1. However, any explanation as to how a faint and distorted version of the motif should provide a three-dimensional appearance is missing in the opponent's argumentation. In particular there is no clear and unambiguous disclosure of “an areal region that is perceptible to a viewer as an area that protrudes and/or recedes relative to its actual spatial form” as required by claim 1.”
I observe that the Applicant’s experts have not commented on figure 11 or the Opponent’s characterisation thereof.
Before continuing it will be instructive to consider the Macquarie Dictionary (Macquarie Dictionary Online, 2015, Macquarie Dictionary Publishers, an imprint of Pan Macmillan Australia Pty Ltd, definition of “protrude” and “project”. “Protrude is defined as:
“1. to project.
2. to thrust forward; cause to project.”
“Thrust forward” is indicative of forcibly causing something to move or become forward, and as such does not appear relevant to the present situation. I therefore consider that “protrude” is being used in claim 1 to mean “to project” or “cause to project”. While the Macquarie Dictionary gives multiple definitions for “project”, the most relevant for present purposes are:
“…6. to throw or cause to fall upon a surface or into space, as a ray of light, a shadow, etc., 7. to cause (a figure or image) to appear as on a background…
9. to cause to jut out or protrude.
10. to throw forwards (a figure, etc.) by straight lines or rays (parallel or from a centre) which pass through all points of it and reproduce it on a surface or other figure…
13. to extend or protrude beyond something else.”
It is apparent from the above definitions of “project” that there are two general possibilities here:
(i). “project” is being used in the sense that an image of something is being cast onto a surface (a screen for example) where, depending on the nature of the surface, it can be viewed; or
(ii). “project” simply means that something extends beyond or protrudes with respect to something else or juts out in some manner.
The question of course is which of these definitions is most appropriate in the context of claim 1. It is notable that sense (ii) can be defined as “protrude”. In addition it is highly suggestive that while “protrude” and “project” are frequently used synonymously, it is not usual to refer to a “projected image” (in the sense of to cast an image onto a screen) as a “protruded image”. It is also sense (ii) that is intended when reading the opposed application. Therefore I consider that sense (ii) is the appropriate definition. As such I do not consider that the projection of an image of the area in figure 11 onto a viewing screen is commensurate with the area being “perceptible as an area that protrudes and/or recedes relative to its actual spatial form” as defined in claims 1 and 19. It follows that I am satisfied that figure 11 does not deprive claims 1 and 19 of novelty. It also follows that the dependent claims are novel over the disclosure of figure 11.
US 5105306 (D2)
D2 relates to the creation of a three dimensional visual effect using an array of sections formed in a surface wherein each of the sections has a reflective facet. This creates the illusion of a three dimensional scene from what in reality is only a two dimensional surface. The effect of D2 is best understood by reference to figure 1 which is reproduced below.
In figure 1 the surface of a scene to be replicated (the model scene) is partitioned into a two dimensional array of non-overlapping sections 1 to 10. The slope of each of these sections is determined, and an array of like-sized sections 11 to 20 is created on a base 22. The slope and position of each of the sections 11 to 20 corresponds to the appropriate section 1 to 10 from the model scene. The elevation of the sections 11 to 20 is greatly reduced compared to section 1 to 10 such that the surface 22 appears to be substantially flat. The flat approximations to the model surface sections are called facets 24, with these facets comprising a highly reflective surface 26. The net effect is to simulate a three dimensional approximation to the model surface using a surface 22 that is greatly reduced in height compared to the topography of the model scene.
The Opponent outlines their novelty arguments in view of D2 at [64] to [78] of their written submissions. Specifically it is alleged that claims 1, 2, 3, 5, 7, 9, 10, 12, 19 and 20 lack novelty in view of D2. For matters of convenience I shall initially confine myself to considering claims 1 and 19 in view of D2.
On considering D2 it is apparent that the following feature of claims 1 and 19 is not disclosed in D2:
“…the majority of said pixels respectively having several optically active facets of identical orientation per pixel…”
In relation to this feature the Opponent states at [68] of their written submissions that:
“D2 describes that the angles of reflection of the reflective surface segments are varied in controlled ways such that each segment has the same slope as the corresponding section in the model scene. We refer to the Abstract and column 1, lines 48 to 53 of D2. Segments corresponding to sections of identical slope in the model scene have identical orientation (see Figure 1 of D2).”
However the missing feature requires that there must be a majority of pixels (commensurate with sections in D2) with several optically active facets of identical orientation in each pixel. It is not entirely clear from the Opponent’s arguments at [68] how D2 meets this limitation. The discussion in relation to figure 1 at column 1, lines 48 to 64 simply indicates that the orientation of each of the facets is chosen so as to simulate the model surface. It may be that based on the model scene in figure 1 that there are some facets which have identical orientation. However this does not imply that any of these facets are in the same section (or pixel), let alone there being a majority of such sections wherein each section has several facets of identical orientation.
The key to understanding the Opponent’s arguments can be found in their written submissions at [66]:
“Because the Opposed Application arbitrarily groups the optically active facets into different pixels, reflective surface segments in an area could be grouped together to make up a pixel of claim 1.”
This argument appears to be based on Dr Lee’s statements at [24.2] of his declaration, where he indicates that it is not clear to him why the facets in the specification have been grouped into pixels. At the hearing I asked Mr Green if by “arbitrarily” the Opponent was arguing that the missing feature was inessential. Mr Green indicated that one could consider that to be the case. For the purposes of this decision I have taken the Opponent to be arguing that the missing feature is inessential.
However I do not agree with the Opponent’s contention that the missing feature is inessential to the claimed invention. At [143] the description of the opposed application reads as follows:
“This sawtooth grating imitates the original surface 9 to be simulated including its three-dimensional impression. This sawtooth grating is flatter than a sawtooth grating created by the same procedure without the subdivision of the pixels 4 into several facets 5 according to the invention”.
It is thus apparent that the missing feature cannot be considered inessential as it makes a material difference to the working of the invention as per Catnic. As such I am satisfied that D2 does not deprive claims 1 and 19 of novelty. It follows that the dependent claims are also novel over D2.
WO 2006/013215 (D3)
D3 discloses a diffractive structure comprising a flat microrelief or other modulated structure that creates a three dimensional simulation of a real or imaginary scene. The diffractive structure comprises a series of diffractive zones on a surface, wherein each of the diffractive zones corresponds to part of the real or imaginary scene. Each diffraction zone has a periodicity and orientation so as to deflect incident light in the same manner as the corresponding part of the real or imaginary scene. The effect of D3 is best understood with reference to figures 3 and 6, both of which are reproduced below.
In the upper part of figure 3, light is incident upon a real or imaginary scene 11, resulting in light propagating through the real or imaginary scene as deflected light 8. The lower part of figure 3 shows light 9 incident upon diffractive structure 10. The incident light passes though the diffractive structure 10 as deflected light 8’which corresponds to deflected light 8, thereby simulating the real or imaginary scene 11.
Figure 6 provides more detail on an embodiment of the diffractive structure 10 which is used to overcome chromatic aberrations. In the right hand side of figure 6 is shown a plan view of part of the diffractive structure 10, wherein it is divided into a series of local areas delineated by boundaries 28. Each of the local areas is divided into sub-areas 29, which differ in their periodicity such that spectral components 23, 24, 25 of white light (seen on the left of figure 6) incident on the corresponding sub-areas 29 are deflected into directions 23’, 24’, 25’, which correspond to the direction of propagation of the real or imaginary scene. This results in the observer 27 seeing a simulation of the real or imaginary scene, but with a reduction in chromatic aberrations. Page 23, second paragraph indicates that the division of a local area 28 into sub-areas 29 is arbitrary.
However it is apparent that D3 does not disclose the following feature:
“…wherein the dimensions of the optically active facets are between 3µm and 300µm...”
In their written submissions at [82] the Opponent asserts that as page 22, third paragraph discloses a periodicity of 10µm, then the dimensions of the optically active facets can be less than 10µm. I agree that D3 indicates that the periodicity of the diffractive zones is ideally 10µm or less. However a periodicity of 10 µm or less only places a restriction on the width of the diffractive zones, not on the remaining dimensions. The fact that the diffractive zones are microreliefs is suggestive of the height thereof being of the order of micrometres, but that is as far as the disclosure of D3 goes. As division into sub-areas 29 is arbitrary, though within the restrictions placed by the particular form of the scene to emulated, this also suggests that the distance or length that the diffractive zones extend across a sub-area is also arbitrary.
In view of the above I consider that the disclosure of D3 presents the skilled addressee with a signpost that at best is planted in the dark. This does not amount to the clear and unmistakable directions as discussed in General Tyre & Rubber. I am therefore satisfied that D3 does not deprive claims 1 and 19 of novelty. It follows that the dependent claims are also novel over D3.
US 5301062 (D4)
D4 discloses the creation of a 3D effect using photographs of an object from a variety of directions, and then encoding these photographs into a surface using diffraction gratings formed as curves so as to achieve a stereoscopic or three dimensional reproduction via a parallax effect. The operation of D4 is best understood with reference to figures 1, 5, 6, and 7, which I have reproduced below.
In figure 1 a series of flat images 80 of an object 85 are collected by a number of cameras 81, with each camera taking an image at a different position, these images being called parallax images. The surface is divided into a series of dots, with each dot being divided into as many dot portions as there are parallax images, for example dot portions r1, r2, r3 for three parallax images as can be seen on figure 5. Each of the dot portions comprises a diffraction grating, which is formed as a curve and is arranged so as to diffract light into an appropriate viewing direction such that a viewer will see an image corresponding to the parallax image of the object 85 as seen from that direction. Due to the fact that the viewer has stereoscopic vision, they will in fact see several such parallax images at any one viewing direction meaning that a three dimensional rendering of the object 85 will be perceptible. This is best represented on figures 6 and 7 for three parallax images. Although the object in figure 6 and 7 is not real in the sense that it appears as a “T” from the left, an “O” from the centre and a “P” from the right, the generalisation to real objects is apposite.
On reviewing D4 it is clear that the following feature is not disclosed:
“…wherein the dimensions of the optically active facets are between 3µm and 300µm…”
At [101] of their written submissions the Opponent states that:
“D4 does not disclose any dimensions for the dots. However, because optically active facets having dimensions between 3μm and 300μm does not exclude optically diffractive effects and because D4 relates to a diffraction grating pattern, the diffraction grating pattern of D4 will also have this feature.”
Even if I accept this argument by the Opponent, this places a limitation on the pitch of the diffraction gratings. It places no limitation on the length or height of the curves of the diffraction grating. In particular the length would only be limited by the size of the dot portion. As the size of the dot portions, while presumably small, is not stated there is no precise limitation on the length of the curves as such. In addition there is no stated limitation on the height of the diffraction elements, which would seem to be only limited to the extent necessary to achieve the aims of the specification. Consequently I am satisfied that D4 does not deprive claims 1 and 19 of novelty. It follows that the dependent claims are also novel over D4.
WO 98/08131 (D17)
D17 discloses a security element for a banknote and the like wherein a substrate is arranged to provide three dimensional images to a viewer. This is achieved by having stereo pairs of elements being arranged on or in the substrate. Each element of a stereo pair provides a viewer with an image of a point that is a certain distance from the plane of the substrate, thus giving rise to a parallax effect. A plurality of stereo pairs gives rise to a plurality of image points which is perceived by a viewer as a three dimensional image, due to the parallax effect. Preferably a plurality of stereo pairs is also provided for each point image so as to allow the same point to be viewed from different angles.
The nature of D17 is best illustrated with respect to figures 1 and 2, which I have reproduced below. In these figures stereo pairs 14, 16 are comprised of linear grooves or ridges. In both figures the stereo pair is orientated to provide an image of a point P with respect to the substrate. In figure 1 the point P appears to be below the substrate, while in figure 2 point P appears to be above the substrate.
On reviewing D17 it is apparent that the following feature is not disclosed:
“…the majority of said pixels respectively having several optically active facets of identical orientation per pixel…”
In relation to this feature the Opponent states at [110] of their written submissions that:
“D17 describes that each stereo pair of elements provide the viewer with an image of a point. Further, for each point image, a plurality of stereo pairs is preferably provided, so that the same point can be viewed from different angles. Further, as shown in Figure 4, the azimuth angle of the facets is identical. As acknowledged in claim 10 of the Opposed Application, the orientation of the facets is in accordance with their inclination and/or azimuth angle. We refer to page 1, lines14 to 18 and lines 34 to 36 of D17.”
These arguments closely follow those of Dr Lee on D17 at Lee [109].
The Applicant responds to this at [78] of their submissions:
“Bob Lee comments on D17 in paragraphs 107 to 120 of his declaration. We note that Bob Lee refers to D17 relying on the stereo pairs of elements (see para 108). In paragraph 109 Bob Lee states that Figure 4 shows facets having equal azimuth angles. This feature cannot in fact be deduced from Figure 4 of D17. In fact, it appears that in Figure 4 the neighbouring facets in fact differ from each other with respect to their azimuth angles.”
Based on [108] of the Opponent’s written submissions it would seem that the Opponent is defining each stereo pair as a “pixel” with each element of the stereo pair comprising a “facet”, as per claims 1 and 19. However such a pair only comprises two elements each with different orientations, which cannot fall within the scope of claims 1 and 19.
It may be that the Opponent considers that the plurality of stereo pairs used to image a single point comprise a pixel. However in these circumstances the orientation of each one of these stereo pairs will be different to the next. This fact is illustrated in figures 3 and 4 of D17 (reproduced below), where a plurality of stereo pairs (SP1…SP4…SP25) are arranged so as to generate the point P at different directions. I therefore agree with the Applicant that D17 does not disclose this feature. Consequently I am satisfied that D17 does not deprive claims 1 and 19 of novelty. It follows that the dependent claims are also novel over D17.
Novelty – Conclusion
The Opponent has failed to make out this ground of opposition. None of the claims were demonstrated to lack novelty.
Inventive Step
The statutory basis for inventive step is set out at s7(2) and s7(3) of the Act, and is reproduced below:
“(2) For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).
(3) The information for the purposes of subsection (2) is:
(a) any single piece of prior art information; or
(b) a combination of any 2 or more pieces of prior art information; being information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded as relevant and, in the case of information mentioned in paragraph (b), combined as mentioned in that paragraph.”
Although not expressly referred to in the 1990 Act, it has been accepted by the authorities that lack of inventive step in the 1990 Act is commensurate with the previous concept of obviousness under the 1952 Act; see Re James EarlWinner and Donna C Winner v Ammar Holdings Pty. Limited [1992] FCA 377 at [12]; (1992) 24 IPR 137 at 140. The question of obviousness has been extensively considered by the courts. In particular Aickin J. stated in Wellcome Foundation Ltd. v VR Laboratories (Aust) Pty. Ltd. [1981] HCA 12 at [45]; (1981) 148 CLR 262 at 286 (“Wellcome Foundation”):
“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 test outlined in Wellcome Foundation is demonstrative of the approach frequently taken to assess lack of inventive step or obviousness, being the so called problem-solution approach. I will adopt this approach in assessing inventive step.
The Problem
The opposed application outlines a number of problems at [4] that exist with holography, this being a technique widely used in the field of security documents to provide a three dimensional appearance to essentially planar objects like banknotes. These problems are said to be that:
· the representation of a hologram depends strongly on the illumination conditions, and in particular when viewed in diffuse illumination; and
· holograms have become common in everyday life such that their “distinctiveness” as a security feature is disappearing.
Based on this the problem to be solved appears to be:
To find an alternative means to a hologram for creating three dimensional images from a substrate, wherein the alternative means is not strongly dependent on the illumination conditions and is not in everyday use.
I note that the neither the Opponent nor the Applicant have commented on the problem to be solved in any way. I also observe that the problem to be solved relates to what appear to be the well known properties of holograms and of their comparatively widespread use in everyday life. As such I am satisfied that the above formulation of the problem does not breach the principles laid down in AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99, to the extent that the problem does not comprise information that is not available to the skilled addressee from common general knowledge (“CGK”) or under s7(3).
The Skilled Addressee
The skilled addressee is taken to be a non-inventive worker in the art with respect to the invention concerned, is taken to have the CGK in the art, and could be a team of people; see Root Quality Control Pty. Ltd. v Root Control Technologies Pty. Ltd. [2000] FCA 980 at [70] to [71] (“Root Quality Control”); Catnic at 242 to 243 and Minnesota Mining & Manufacturing Co. vBeiersdorf (Australia) Ltd. [1980] HCA 9 at [115]; (1980) 144 CLR 253 at 292. In particular in Root Quality Control at [71] Finkelstein J. stated that “... the patent is directed to a person interested in making, constructing, compounding or using the invention ...”
Given the nature of the opposed application, I consider that the skilled addressee is a person or a team of persons engaged in developing, manufacturing and using security elements for the purposes of securing documents of value. Thus the skilled addressee can be expected to be an entity of some sophistication with higher degrees in physics or engineering and/or experience in making or working with security documents. Both parties appear to agree on this; see the Opponent’s written submissions at [18] and the Applicant’s submissions at [14] to [16]. I also note that the qualifications and experience of the expert witnesses supports this proposition; see RAL-1, RB-1 and [2] of Rahm.
I observe that the Applicant has suggested that Dr Lee is clearly inventive and that therefore his views on inventive step should be given no weight (Applicant’s submissions at [17]). Based on the qualifications and experience of all the expert witnesses, I consider that all of the experts are in a position to indicate what a skilled addressee would do with respect to assessing the inventiveness of the claims. To the extent that Dr Lee may have knowledge or abilities beyond that of the notional skilled addressee this is only relevant where his evidence goes beyond what would be expected of the skilled addressee. It will be up to me to decide if and when Dr Lee's evidence extends beyond the skilled addressee and to weigh such evidence accordingly.
Lack of Inventive Step in View of CGK and Prior Art (s 7(3))
The Opponent asserts that each of the claims of the opposed application lack inventive step in view of each of D1 to D4 and D17 when read in view of the CGK at [134] to [148] of their written submissions. To support their case the Opponent has given an extensive list of items that are asserted to comprise CGK at [133] of their written submissions. I will now consider the claims in view of each of D1 to D4 and D17 as per section 7(3) of the Act. For matters of convenience I will put aside for the moment the question of whether each of D1 to D4 and D17 would have been ascertained, understood and regarded as relevant by the skilled addressee, and will only revisit this question for each of D1 to D4 and D17 if this proves necessary.
D1
As observed in my discussion above on novelty, the following feature of claims 1 and 19 is missing from D1:
“…said facets are so oriented that the areal region is perceptible to a viewer of the security element as an area that protrudes and/or recedes relative to its actual spatial form…”
The Opponent argues at [138] of their written submissions that this difference is obvious to the skilled addressee over D1:
“Whilst we submit that this feature is present in at least the embodiments of Figure 10 and 11 of D1, in the event that it is held that this feature is not disclosed in D1, we submit that it was well known that parameters of micromirrors, such as orientation and azimuth angle, could be varied or modulated in pixels of an array of micromirrors to produce various optical effects, see D1 and D10 to D15, and we submit is (sic) would have been obvious to the skilled person in the light of the common general knowledge at the Priority Date to vary the arrangement and parameters of the micromirror arrays of D1 to arrive at the alleged invention of claim 1. There is even motivation in D1 to do this from the embodiment of Figure 10 (sic 9), which discloses a micromirror arrangement on a curved surface that produces the impression of a flat reflecting surface to an observer. From this, it would have been obvious to the person of ordinary skill in the art at the Priority Date to provide an arrangement that produces the reverse impression of a curved surface from a micromirror arrangement provided on a flat surface.”
Assuming that it is well known to vary the orientation and azimuth angle of micromirrors to produce various optical effects, as purportedly established by D1 and D10 to D15, this is quite general in nature. With such knowledge it is open to the skilled addressee to choose from a myriad of orientations and azimuth angles for each of the micromirrors. To establish lack of inventiveness based on this alleged element of CGK it is necessary to establish that the skilled addressee would, in the context of the problem, choose and implement the necessary orientations for the micromirrors as a matter of routine from the myriad of potential orientations. The Opponent has merely asserted that the skilled addressee would make the necessary modifications as a matter of routine and arrive at the claimed invention with no supporting evidence from the expert declarants as to this point. In these circumstances I cannot be satisfied that D1 alone in view of the CGK deprives claims 1 and 19 of inventive step. It follows that the dependent claims are also inventive over D1.
D2
As noted previously D2 does not disclose the feature of:
“…the majority of said pixels respectively having several optically active facets of identical orientation per pixel…”
100.With respect to the missing feature the Opponent states at [146] of their written submissions:
“In the event that D2 is held not to disclose this feature, it was common general knowledge in relation to micromirror arrays to divide pixel elements into subsections having several optically active facets of identical orientation per pixel as disclosed in the published papers D10, D11, D13 and D14, and also as disclosed in D1. It would therefore have been obvious to the skilled person to modify the arrangement of D2 by dividing each surface segment into a plurality of optically active facets of identical orientation, and the modified arrangement would still produce the 3D effect described in D2 and claimed in the Opposed Application. Therefore, claims 1 lacks an inventive step having regard to D2 combined with the common general knowledge in micromirror arrangements.” (my emphasis)
101.However, even assuming that this was CGK before the priority date it is not apparent that a skilled addressee would use this CGK, as a matter of routine and in view of the problem to be solved, modify D2 so that the majority of said pixels respectively have several optically active facets of identical orientation per pixel. D2 teaches that each of the individual facets is arranged to emulate a corresponding part of the replica scene, resulting in a 3D effect. Therefore it is reasonable for the skilled addressee to believe that D2 solves the problem at hand. Consequently it is not apparent why the skilled addressee would modify D2 in any way, let alone in a manner that would arrive at the claimed invention of the opposed application. No evidence has been adduced that would support a skilled addressee making such modifications to D2. Hence I cannot be satisfied that D2 deprives claims 1 and 19 of inventive step when read in light of the CGK. It follows that the dependent claims are also inventive over D2.
D3
102.As noted above D3 fails to disclose the following feature:
“…wherein the dimensions of the optically active facets are between 3µm and 300µm...”
103.The Opponent has not made any detailed submissions on inventive step with respect to D3, D4 and D17, but rather has included these in a blanket statement at [136] of their written submissions:
“To the extent that any one of D1 to D4 and D17 do not disclose the features of the dependent claims, Innovia submits that these features are not inventive in view of the common general knowledge available at the Priority Date.”
104.However no evidence has been adduced which establishes that it was CGK before the priority date to have the length and height of the diffractive zones in the range 3 µm to 300µm, these features also being missing from D3. While D3 does suggest a periodicity of the diffractive zones of less than 10µm, no actual suggestion with respect to the other dimensions is actually provided by figure 6, which appears to be entirely schematic in nature and for the purposes of demonstrating how diffractive effects can be ameliorated. In addition even assuming that the missing features comprised CGK, no evidence has been adduced that establishes that the skilled addressee would, as a matter of routine and in the context of the problem to be solved, implement the diffractive zones of D3 with all dimensions between 3 µm to 300µm, and so arrive at the claimed invention. This is especially so given that the implementation of the sub-areas 29, and therefore in general the lengths of the diffractive zones, is said to be arbitrary It follows that I cannot be satisfied, in view of the evidence provided, that D3 when read in view of the CGK deprives claims 1 and 19 of inventive step. It follows that the dependent claims are also inventive over D3.
D4
105. As noted previously D4 fails to disclose the following feature:
“…wherein the dimensions of the optically active facets are between 3µm and 300µm...”
106.As noted in my discussion with relation to D3, no evidence has been adduced that establishes that it was CGK to have the length and height of the diffraction gratings between 3µm and 300µm. Again, even assuming this was CGK, no evidence has been adduced that establishes that the skilled addressee would, as a matter of routine and in the context of the problem to be solved, implement the diffraction curves of D4 with all dimensions between 3 µm to 300µm, and so arrive at the claimed invention. It follows that I cannot be satisfied, in view of the evidence provided, that D4 when read in view of the CGK deprives claims 1 and 19 of inventive step. It follows that the dependent claims are also inventive over D4.
D17
107.As previously noted the following feature is not disclosed in D17:
“...the majority of said pixels respectively having several optically active facets of identical orientation per pixel…”
108.I consider that my reasoning in relation to D2 also applies in a large degree to D17.D17 teaches that each of the individual facets is arranged in pairs so as to emulate a corresponding part of a replica scene using the parallax effect, thus resulting in a 3D effect. Therefore it is reasonable for the skilled addressee to believe that D17 solves the problem at hand. Consequently it is not apparent why the skilled addressee would modify D17 in any way, let alone in a manner that would arrive at the claimed invention of the opposed application. No evidence has been adduced that would support a skilled addressee making such modifications to D17. Hence I cannot be satisfied that D17 deprives claims 1 and 19 of inventive step when read in light of the CGK. It follows that the dependent claims are also inventive over D17.
Inventive Step – Conclusion
109.The Opponent has failed to make out this ground of opposition. None of the claims were demonstrated to lack inventive step in view of the evidence provided.
Full Description
110.Section 40(2)(a) of the Act requires that a specification describe the invention fully. The High Court in Kimberly-Clark Australia Pty. Ltd. v Arico Trading International Pty. Ltd. [2001] HCA 8 at [25] (“Kimberly-Clark”) expressed the test for full description 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?”
The Opponent’s Full Description Arguments
111.The Opponent alleges that claims 1, 15 and 19 are not fully described at [149] and [150] of their written submissions. I will consider these arguments below.
Claims 1 and 19
112.The Opponent alleges that claims 1 and 19 are not fully described at [149] of their written submissions, where it is stated:
“Claims 1 and 19 state that the facets are 'so oriented that the areal region is perceptible to the viewer as an area that protrudes and/or recedes relative to its actual spatial form'. However, the specification does not describe fully how the facets are oriented to achieve this desired effect.”
The Opponent supports this contention by reference to very similar wording in Lee at [24.3] where Dr Lee states that:
“Claim 1 does not define how the facets are 'so oriented that the areal region is perceptible to the viewer as an area that protrudes and/or recedes relative to its actual spatial form'. Even the specification does not describe how the facets are 'so oriented that the areal region is perceptible to the viewer as an area that protrudes and/or recedes relative to its actual spatial form'.”
113.In contrast the Applicant responds at [89] of their submissions, arguing that:
“With regards to paragraph 149 of the opponent’s submissions, the specification provides extensive instructions for the person skilled in the art to produce the invention see Figure 3 and the associated description. Further if the specification were deficient, why has the Opponent not submitted evidence that they were unable to reproduce the invention based on the disclosure of the patent application. Certainly the Applicant’s experts had no difficulty in understanding the claimed invention.”
114.I agree with the Applicant. Indeed the opposed application goes well beyond the disclosure of figure 3. In particular [80] to [143] comprise detailed mathematical models which describe how to simulate a generally protruding surface using pixels subdivided into facets. In view of this and in view of the sophistication of the skilled addressee it is not apparent what information is missing from the opposed application that would result in the skilled addressee resorting to matters of prolonged study or to provide new inventions in performing the claims. It follows that I cannot be satisfied that claims 1 and 19 are not fully described.
Claim 15
115.The Opponent also alleges that claim 15 is not fully described at [150] of their submissions:
“Claim 15 defines that 'the areal region is perceptible as a rotating mirror', but there is no disclosure in the specification of how the facets can be arranged to produce this effect.”
116.The Applicant responds at [90] of their submissions:
“With regard to paragraph 150 of the Opponent’s written submissions this is explained in detail in paragraphs [0091] to [0099] of the opposed application.”
117.I agree with the Applicant. To my mind the cited passages provide the skilled addressee with enough information to perform the invention without “new inventions or additions or prolonged study of matters presenting initial difficulty”. It follows that I cannot be satisfied that claim 15 is not fully described.
Full Description – Conclusion
118.The Opponent has failed to make out this ground of opposition. None of the claims were demonstrated to lack full description.
Claims Do Not Define the Invention
119.This necessity is set out at s40(2)(b) of the Act, which indicates that an application for a standard patent must “…end with a claim or claims defining the invention”.
120.The requirements of s40(2)(b) were discussed in PhotoCure ASA v Queen’s University at Kingston [2005] FCA 344 at [117]:
“Section 40(2)(b) of the Act requires that a complete specification must "end with a claim or claims defining the invention". This requirement is related to the requirement in s 40(3) that the claims must be clear and succinct, in that if sufficient ambiguity attends a claim it may be invalid for failing to define the invention. However, invalidity will only arise if the claim is "incapable of resolution by a skilled addressee by the application of common sense and common knowledge"”
The Opponent’s Lack of Definition Arguments
121.The Opponent alleges that claims 1, 15, 17 and 19 do not define the invention at [151] to [153] of their written submissions:
“Claims 1 and 19 do not define how the facets are 'so oriented that the areal region is perceptible to the viewer as an area that protrudes and/or recedes relative to its actual spatial form'.
Claim 15 does not define how 'the areal region is perceptible as a rotating mirror'
Claim 17 does not define how 'the orientations of several facets are so changed ... that the protruding and/or receding area is still perceptible but with a surface of a matt appearance'.” (emphasis in original)
122.The Opponent’s criticisms appear to be that the claims do not precisely spell out how the skilled addressee is to achieve a certain effect or result and that, as a result, the claims are ambiguous. However this argument appears to be confounding the purpose of the claims with the description, which as noted by McTiernan J in AMP v Utilux(1971) 45 ALJR 123 at page 128, have distinct functions:
“The description of the invention is not the definition of it. A claim is a portion of the specification which fulfils a separate and distinct function. It, and it alone, defines the monopoly; and the patentee is under a statutory obligation to state in the claims clearly and distinctly what is the invention which he desires to protect.”
123.As a consequence the Opponent’s arguments under this ground are more appropriate to an attack under s40(2)(a). I note that I have already dealt with this above in relation to claims 1, 15 and 19. For completeness I observe that [83], [84], [180] and [181] of the description comprise sufficient directions for the skilled addressee to carry out the creation of a matt appearance as per claim 17.
124.In any event I do not consider that these claims have ambiguity to the extent that a skilled addressee cannot resolve the claims using “commonsense and common knowledge”. Consequently I am not satisfied that claims 1, 15, 17 and 19 violate s40(2)(b) of the Act.
Definition – Conclusion
125.The Opponent has failed to make out this ground of opposition. None of the claims were demonstrated to not define the invention.
Fair Basis
126.The statutory basis for fair basis is given at s40(3) of the Act, which states that the claims must be fairly based on the matter described in the description. The requirement for the claims to be fairly based has been treated by the authorities as a requirement for consistency between the invention outlined in the description and the invention as claimed in the claims, as noted in Kimberly Clark at [15]:
“... where the issue is one under s 40(3) of ''fair-basing" of a claim, what the 1990 Act requires is a comparison between the matter described in the specification and the claim which defines the scope of the monopoly ...”
127.This requirement for consistency between the invention described and the invention claimed means that, where a specification describes a new means to achieve a known result, claims to the result are only fairly based if they are limited to the new means. This was expressed by the High Court in the following terms in Shave v H V McKay Massey Harris Pty Ltd [1935] HCA 39; (1935) 52 CLR 701 at 709:
“When a combination claim states an invention which gives an old result by a new means, the monopoly is limited, at any rate prima facie, to the new means. But when by a new application of principle the inventor has obtained a new result or thing, even when it be done by a combination, he may claim all the alternative means by which the thing or result may be achieved.”
The Opponent’s Fair Basis Arguments
128.At [154] of their written submissions the Opponent argues that claims 1 and 19 are not fairly based, arguing that:
“In the present case, the result of providing an areal region that is perceptible as an area that protrudes and/or recedes relative to its actual spatial form is not a new result and is known at the Priority Date. For example any one of D1 to D4 and D17 describes creating an areal region with optically active facets that appears three-dimensional to a viewer. Because the result is not new, the Applicant is not entitled to claim all means of achieving that result besides those the Applicant has disclosed in the specification. Claims to all means for achieving the known result travel beyond the subject matter disclosed in the specification and are therefore not fairly based.”
129.In view of the evidence there are perhaps well founded reasons for believing that “…providing an areal region that is perceptible as an area that protrudes and/or recedes relative to its actual spatial form…” is not a new result. However on reading the opposed application it is apparent that a new and improved means of achieving this result has been disclosed, namely by having “the majority of said pixels having several optically active facets of identical orientation per pixel”; see in particular [143] of the description. All of the claims are limited to this improved means. It follows that the claims are fairly based.
Fair Basis – Conclusion
130.The Opponent has failed to make out this ground of opposition. None of the claims were demonstrated to lack fair basis.
Conclusion
131.None of the grounds of opposition were made out. The opposition is unsuccessful. Subject to appeal, I proceed that the opposed application proceed to grant.
Costs
132.Costs normally follow the event. However the opposition process has resulted in the Applicant making narrowing amendments prior to the hearing. In this sense the Opponent can be seen as being partially successful despite the opposition per se being unsuccessful. As a consequence I award costs against the Applicant according to Schedule 8 of the Regulations up to the date the amendments were allowed, and from the date the amendments were allowed I award costs against the Opponent according to Schedule 8 of the Regulations.
Dr W.E. Guinea
Delegate of the Commissioner of Patents
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