Innovia Security Pty Ltd v Giesecke & Devrient GmbH
[2014] APO 36
•5 June 2014
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Innovia Security Pty Ltd v Giesecke & Devrient GmbH [2014] APO 36
Patent Application: 2005274464
Title:Security element comprising a support
Patent Applicant: Giesecke & Devrient GmbH
Opponent: Innovia Security Pty Ltd
Delegate: Xavier Gisz
Decision Date: 5 June 2014
Hearing Date: 12 February 2014, in Canberra
Catchwords: PATENTS – opposition to the grant of the patent under s 59 – opposed on the basis of novelty, inventive step, clarity, and manner of manufacture – claim 1 and all claims dependent thereon are not clear – claims 4-24 are clear, novel, inventive and a manner of manufacture – costs awarded against the applicant
Representation: Patent applicant: Claude Anese of Cullens Patent & Trade Mark Attorneys
Opponent:Ken Bolton of Watermark Patent and Trade Mark Attorneys
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2005274464
Title:Security element comprising a support
Patent Applicant: Giesecke & Devrient GmbH
Date of Decision: 5 June 2014
DECISION
Claims 1 and all claims dependent on claim 1 are not clear. The opposition is successful on this ground.
Independent claim 1 and claims dependent thereon (claims 2, 3 and claims 6-23 when dependent on claim 1) are considered so unclear that no assessment of other grounds of opposition can be made on these claims.
Claim 4 and all claims dependent thereon (claims 5-23 when dependent on claim 4) and omnibus claim 24 are considered clear, novel, inventive and a manner of manufacture.
I allow the Applicant 60 days from the date of this decision to file amendments consistent with the findings in this decision.
Costs are awarded against the Applicant, Giesecke & Devrient GmbH, according to Schedule 8.
REASONS FOR DECISION
Background
Application 2005274464 in the name of Giesecke & Devrient GmbH (the Applicant) is the national phase entry in Australia of PCT application WO 2006/018171 which was filed on 8 August 2005 with an earliest priority date of 12 August 2004. It was advertised as accepted on 10 February 2011.
An opposition to the Application was filed by Securency International Pty Ltd, now Innovia Security Pty Ltd (the Opponent), on 10 May 2011. The Opponent served a Statement of Grounds and Particulars on 10 August 2011.
A request to amend the Statement of Grounds and Particulars (the Statement) was filed on 20 August 2012 together with an amended Statement of Grounds and Particulars (the amended Statement). The Evidence in Support was completed on 20 August 2012.
On 10 January 2013 the Applicant advised that they would not serve evidence, and on that same date filed a Section 104 request to amend the description and claims of the accepted specification. The Section 104 amendment request was allowed on 15 July 2013.
The hearing was held in Canberra on 12 February 2014.
During the hearing I noted that two priority documents (that would be necessary to establish that two of the documents in evidence would be suitable as ‘whole of contents’ prior art documents) had not been adduced in the evidentiary stages of the opposition prior to the hearing. I allowed the Opponent one week from the date of the hearing to indicate how they wished to proceed in light of this deficiency.
On 19 February 2014 the Opponent adduced further evidence and requested that the Commissioner allow the Opponent to serve further evidence. On 4 March 2014 leave to file further evidence was granted by a Delegate of the Commissioner.
On 6 March 2014 a direction was made that allowed the Applicant until 6 May 2014 to file submissions and further evidence in response to the further evidence. On 30 April 2014, the Applicant informed the Commissioner that they did not intend to make additional submissions or file further evidence.
Evidence
Partial Evidence in Support was served on 10 May 2012 consisting of a statutory declaration by David Ian Lindsay and supporting Exhibits IDL-1 to IDL-7. On 20 August 2012, Evidence in Support was completed by service of Statutory Declarations by Dr Franco Moia with supporting Exhibits FM-1 to FM-15 and another Statutory Declaration by David Ian Lindsay with supporting Exhibits DIL-1 and DIL-2.
Further evidence from the Opponent was served on 19 February 2014 consisting of a statutory declaration by Kenneth Bolton and exhibits KWB-1 to KWB-3.
The specification
The specification ends with 24 claims reproduced below:
- A security element for securing security papers, value documents and the like, having a transparent or translucent substrate, characterized in that
– the transparent or translucent substrate is provided with an authenticating mark which includes one or more layers composed of liquid crystal material in the form of patterns, characters or codes;
– wherein the authenticating mark,
o in transmitted light, imparts a first optical impression and displays patterns, characters or codes, and
o in light reflected from a highly absorptive, dark background surface, imparts a second optical impression differing from the first optical impression, namely that
o firstly in reflected light, the authenticating mark displays an optically variable effect, and that
o secondly in reflected light, the appearance or the information content of the patterns, characters or codes of the authenticating mark are changed in the second optical impression, or the patterns, characters or codes completely disappear.
2. The security element according to claim 1, characterized in that a printing layer is provided that, in reflected light or transmitted light, yields, together with patterns, characters or codes of the authenticating mark, an aggregate piece of information.
3. The security element according to claim 2, characterized in that, when switched from transmitted light view to reflected light view or from reflected light view to transmitted light view, the aggregate piece of information appears, disappears, or is changed, in particular the aggregated piece of information is complemented.
4. A security element for securing security papers, value documents and the like, having a transparent or translucent substrate, characterized in that,
–the transparent or translucent substrate is provided with an authenticating mark which includes one or more layers composed of liquid crystal material that are present in the form of patterns, characters or codes;
–wherein the authenticating mark,
oin transmitted light, imparts a first optical impression and displays patterns, characters or codes, and
oin reflected light, against a highly absorptive background surface, imparts a second optical impression differing from the first optical impression, namely that
ofirstly in reflected light, against the predefined highly absorptive, dark background surface, the authenticating mark displays an optically variable effect, and that
osecondly in reflected light against the highly absorptive, dark background surface, the appearance or the information content of the patterns, characters or codes of the authenticating mark are changed in the second optical impression, or the patterns, characters or codes completely disappear.
5. The security element according to claim 4, characterized in that one or more effects from the group: diffraction effects, viewing-angle-dependent colorshift effects, scattering effects, especially stemming from a matte finish, and refractive effects, especially caused by microlenses and/ or micromirrors, is used as the optically variable effect.
6. The security element according to any one of claims 1 to 5, characterized in that authenticating mark includes an imprint in the form of patterns, characters or codes.
7. The security element according to any one of claims 1 to 6, wherein the authenticating mark includes one or more layers composed of cholesteric liquid crystal material.
8. The security element according to any one of claims 1 to 7, characterized in that the authenticating mark includes an areal diffraction pattern.
9. The security element according to claim 8, characterized in that the areal diffraction pattern exhibits an embossing pattern disposed on the substrate.
10. The security element according to claim 9, characterized in that the embossing pattern is provided with a high-index coating.
11. The security element according to any one of claims 1 to 9, characterized in that the authenticating mark includes a matte finish, an arrangement composed of microlenses or an arrangement composed of micromirrors.
12. A security arrangement for securing security papers, value documents and the like, having a security element according to any one of claims 1 to 11 and a verification element that provides a highly absorptive, dark background surface for viewing the security element in reflected light.
13. The security arrangement according claim 12, characterized in that a damageless check of the authenticating mark of a security arrangement is practicable solely with a verification element of a security arrangement disposed on another security document.
14. A security document, such as a security paper, value document or the like, having a security element according to at least one of claims 1 to 11.
15. A security document, such as a security paper, value document or the like, having a security arrangement according to claim 12 or 13.
16. The security document according to claim 15, characterized in that the authenticating mark and the verification element are so geometrically disposed on the security document that the authenticating mark is bringable over the verification element by bending or folding the security document.
17. The security document according to any one of claims 14 to 16, characterized in that the security document has a paper or plastic substrate.
18. The security document according to any one of claims 14 to 17, characterized in that the authenticating mark is disposed in or over a window area or a through opening in the security document.
19. The security document according to claim 18, characterized in that the security document has a plastic substrate and the authenticating mark is applied over a transparent or translucent, especially unprinted, area of the plastic substrate.
20. The security document according to claim 18, characterized in that the security document has a paper substrate and the authenticating mark is applied over a through opening in the paper substrate.
21. The security document according to claim 18, characterized in that the security document has a paper substrate and the authenticating mark is introduced into a through opening in the paper substrate with papermaking technology.
22. The security document according to claim 20 or 21, characterized in that the through opening is produced during paper manufacture without a sharp boundary edge of its border area.
23. The security document according to any one of claims 18 to 22, characterized in that the security document is a security paper or a value document.
24. A security element for banknotes, security papers, value documents and the like, the security element being substantially as described herein with reference to the accompanying drawings.
Features of the independent claims
For reasons given further below in the decision, I have considered only the features of the second independent claim – claim 4. I have identified eleven distinct features in the claims designated (a) to (k):
(a)A security element for securing security papers, value documents and the like
(b)having a transparent or translucent substrate
(c)the transparent or translucent substrate is provided with an authenticating mark
(d)[the authenticating mark] includes one or more layers composed of liquid crystal material
(e)[one or more layers of liquid crystal material] that are present in the form of [first] patterns, characters or codes
(f)wherein the authenticating mark, in transmitted light, imparts a first optical impression
(g)[the authenticating mark] displays [second] patterns, characters or codes
(h)in light reflected against a highly absorptive, dark background surface,
(i)[reflected light] imparts a second optical impression differing from the first optical impression
(j)in reflected light, the authenticating mark displays an optically variable effect
(k)in reflected light, the appearance or the information content of the patterns, characters or codes of the authenticating mark are changed in the second optical impression, or the patterns, characters or codes completely disappear.
Construing the claims
Patterns, characters or codes
The phrase ‘patterns, characters or codes’ is given its plain meaning of something more complex than a single simple area of uniformity. Thus a rectangular area of uniform appearance is not a ‘pattern, character or code’. The pattern, character or code must also be in the horizontal plane, rather than a variation in the depth.
Liquid crystal and authenticating mark in the form of patterns, characters or codes
The Applicant and Opponent provided differing interpretations of the following excerpt of the claim:
“the transparent or translucent substrate is provided with an authenticating mark which includes one or more layers composed of liquid crystal material that are present in the form of patterns, characters or codes”
The Opponent submitted that, in this part of the claim, it is the authenticating mark which is in the form of patterns, characters or codes. The Opponent noted that there are two references to “patterns, characters, or codes” in the claim wherein the second reference is unambiguously directed to the authenticating mark forming the “patterns, characters, or codes”, which suggests the first reference should also be directed to said authenticating mark.
The Applicant submitted that, in this part of the claim, it is the liquid crystal which is in the form of patterns, characters or codes. The Applicant argued that other punctuation would be needed (for example parenthetical commas around the words “…which includes one or more layers composed of liquid crystal material…”) to arrive at the Opponent’s construal of the claim.
The Applicant noted another grammatical feature to support their interpretation. Specifically, claim 4 states “…an authenticating mark which includes one or more layers composed of liquid crystal material that are present in the form of patterns, characters or codes”. The word ‘are’ is used to refer to the plural – in this case the layers of liquid crystal.
I will proceed on the basis that the phrase “patterns, characters, or codes” has two different uses within the claim. The first in relation to the liquid crystal and the second in relation to the authenticating mark. The understanding of the phrase “patterns, characters, or codes” will be further considered with respect to the clarity of the claims further below in this decision.
First optical impression
Both parties were in agreement that the first optical impression must be clearly distinct and discernable. However, this understanding of the term ‘first optical impression’ is in contrast to the description which states at page 7 lines 21 to 23 (with my emphasis added):
“When the banknote 10 is viewed in transmitted light, the security element 14 imparts a first optical impression, in the exemplary embodiment the impression of a patternless and substantially colorless transparent surface.”
This apparent inconsistency can be reconciled by allowing that the term ‘first optical impression’ has a broad meaning to cover all embodiments within the description and a more specific meaning as it applies to different embodiments of the described invention. In this case, the broad meaning of the term ‘first optical impression’ is simply what can be seen in transmitted light.
In embodiments where the authenticating mark contains no opaque component, the first optical impression (viewed in transmitted light) appears transparent. On the other hand, in embodiments where the authenticating mark contains opaque components (e.g. the embodiment that provides the descriptive support to the invention defined in claim 4), the first optical impression does not appear transparent.
Since the invention defined in the claims is specific to an authenticating mark with an opaque component (as explained more fully below), I will adopt the specific meaning of ‘first optical impression’ as being a distinct and discernable (non-transparent) effect.
Second optical impression
It follows from the above construction of the first optical impression being a non-transparent visual effect, that the second optical impression must also be non-transparent.
Authenticating mark
The authenticating mark is visible in transmitted light and must appear different in reflected light. The authenticating mark includes liquid crystal, but the scope of the claim means it is not limited being composed only of liquid crystal.
Optically variable effect
An ‘optically variable effect’ is a term used in the field of security element technology to mean that the optical effect changes according to angle of view. See, for example, Page 3 lines 9 to 15:
“Alternatively or in addition to a change in tone and/or color intensity, in reflected light, against the predefined background, the authenticating mark can display an optically variable effect. This can be, for example, a viewing-angle-dependent color-shift effect that gives the viewer a color impression that changes with the viewing direction. Diffraction effects, scattering effects, especially stemming from a matte finish, and refractive effects, especially caused by microlenses and/or micromirrors, may also be used.”
Reflected light, against a highly absorptive background surface
The dark background is used to remove any ambient transmitted light so that only the light reflected off the security device could be seen. This is in in accord with the description and my understanding of the invention.
In the second optical impression the patterns, characters or codes completely disappear
For the ‘second optical impression’ to “completely disappear”, I understand this to mean that the appearance of the second optical impression matches (and thus blends in with) the appearance of the background. I note that this is an optional feature of the claim, and thus does not provide any real limitation on the scope of the claim.
Omnibus claim 24
I have considered omnibus claim 24 only to the extent that it relates to the preferred embodiment that provides descriptive support to claim 4 and dependent claims (i.e. the embodiment in figure 20 and accompanying description).
The invention
Before determining whether the opposed application meets the validity requirements, it is beneficial to first consider how the invention actually works.
The amended specification states the invention is as follows:
“The invention provides a security element for securing security papers, value documents and the like, having a transparent or translucent substrate. The transparent or translucent substrate is provided with an authenticating mark which includes one or more layers composed of liquid crystal material that are present in the form of patterns, characters or codes.”
The heart of the invention is an authenticating mark that appears different in transmitted light when compared with its appearance in reflected light. It is notable that everyday transmissive objects typically appear the same in transmitted light as in reflected light. So for example, a piece of red glass will appear red whether light is transmitted through it or reflected off it.
There are some materials that affect light significantly differently depending on whether the light is transmitted or reflected; one such material (given as a preferred embodiment of the invention) is cholesteric liquid crystal. Cholesteric liquid crystals reflect light at one particular frequency/colour, and transmits light at all other frequencies/colours. This means a cholesteric liquid crystal will appear substantially transparent but will reflect light of one colour (e.g. green). In usual ambient conditions, the amount of transmitted light will be overwhelm or ‘swamp’ the relatively small amount of reflected light. However, when transmitted light is removed, for example by viewing against a dark background, the reflected light can be seen.
Although cholesteric liquid crystals (and their light transmitting and reflecting properties) have been known for more than a century, their application in security devices has only occurred relatively recently.
Preferred embodiment
The Applicant noted in the hearing that not all embodiments in the description fall within the scope of the claims. This is understandable since post-acceptance amendments were made to remove a significant proportion of the claims (including independent claims).
During the hearing I asked the Applicant which of the various embodiments fell within the claims. The Applicant responded that the embodiments disclosed in figures 15 to 20 and corresponding description were embodiments that fell within the scope of the claims, with particular emphasis on the embodiment in figure 20.
In my opinion, only the embodiment disclosed in figure 20 falls within the scope of the claimed invention, since this is the only embodiment that contains all the features claimed (in particular features (e) and (g), which are not both present in any other embodiment).
The embodiment disclosed in figure 20 and accompanying description (page 17 lines 18 to 30) is reproduced below:
“Another effect is exploited in the exemplary embodiment in fig. 20. The banknote
180 depicted there exhibits a see-through area 182 that is covered with a transparent foil 184. The foil 184 is provided in a sub-area with a liquid crystal layer 186 in the form of the left half of the numeral “8”. Adjoining the see-through area 182, a black imprint 188 is applied to the banknote paper in the form of the right half of the numeral “8”. The area of the banknote containing the imprint 188 is additionally overprinted with a liquid crystal layer 190.On the banknote, against a light background, only the black imprint 188 is perceptible, which constitutes only a portion of the aggregate piece of information. The liquid crystal area 186, in contrast, is hardly visible or not at all. Only when laid on a black background does the entire numeral “8” appear, through the characteristic shimmering of the liquid crystals.”
A cross-section of this embodiment is not provided in the drawings of the specification. I have derived my own illustration from the information provided in the specification:
This illustration depicts the authentication mark composed of: the liquid crystal area (186), the imprint (188) and the liquid crystal layer (190). The authentication mark (186, 188, 190) resides on a substrate composed of transparent foil (184) and banknote paper (180). Though not explicitly stated in the description, it is readily inferred that the banknote paper must be translucent (rather than transparent) to allow the first and second optical impression to be viewed as described at page 17 lines 18 to 30.
The core of the invention is that the authenticating mark appears different in transmitted and reflected light. This is illustrated in the following table:
First optical impression
(Transmitted light)Second optical impression
(Reflected light)Authenticating mark
Liquid crystal component of the authenticating mark
([first] patterns, characters or codes)not visible
visible
([second] patterns, characters or codes) Other component (opaque component) of the authenticating mark visible
visible
OPPOSITION UNDER SECTION 59
Onus of proof
The request for examination in this case was filed on 13 November 2008. Therefore, the substantive amendments of the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012, including subsection 60(3A) which allows the Commissioner to refuse a patent application if satisfied on the balance of probabilities that a ground of opposition exists, do not apply to the present application. Instead, the onus of proof in this opposition proceeding lies with the opponent, who must establish that it is clear that a valid patent cannot be granted (F.Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283 at [29], [67]; [2000] FCA 283; 50 IPR 305; Commissioner of Patents v Sherman [2008] FCAFC 182 at [18], [22]; [2008] FCAFC 182; 79 IPR 426).
Grounds of Opposition
The patent was opposed on the grounds that the patent application lacks of novelty, an inventive step, a manner of manufacture, and clarity.
Clarity
Light reflected from a dark background surface
Paragraph 4.7 of the amended Statement of Grounds and Particulars, which was added in the amendments of 20 August 2012, states:
“In at least claims 1, 3, and 5, it is unclear with as to how there can be “light reflected from a background surface” when the background surface is a “highly absorptive, dark surface”.”
It is noted that the claims were subsequently amended by the applicant, so old claims 1 and 3 have been deleted and the old claim 5 now corresponds to the new claim 1.
In their submissions, the Applicant provided the following explanation with diagrams to explain their interpretation of the phrase “Light reflected from a highly absorptive, dark background surface”.
“As regards ‘reflected’ light, Claim 1 can be interpreted as viewing in a low level of light reflected from a dark background (even dark backgrounds will reflect some light), whereas claim 4 can be interpreted as viewing in light reflected from the security element being held against (but not necessarily in contact with) the dark background surface. This is shown diagrammatically below:
The important aspect is that the second optical impression is seen in reflection, whereas the first optical impression is seen in transmission.”
This interpretation is problematic for the following reasons. Firstly, as pointed out by the Opponent, a highly absorptive, dark background surface does not reflect a perceptible level of light that would be useful for viewing security features. Secondly, if this interpretation were adopted this implies that the words ‘reflected light’ used later in the claim (“…in reflected light, the authenticating mark displays an optically variable effect…”) is still referring to this imperceptibly small amount of reflected light, however there is nothing in the disclosure to support this interpretation.
It is only where it is impossible to ascertain the invention that a claim should be found to lack clarity (see Décor Corp v Dart Industries 13 IPR 385 at 400).
In this case, the claim in conjunction with the Applicant’s submissions in regards to the claim, make it impossible for me to ascertain the invention that is being claimed. Consequently, I consider claim 1 to lack clarity and claims dependent thereon (claims 2 and 3 and claims 6-23 when dependent on claim 1) to also necessarily also lack clarity. Because a meaningful interpretation cannot be given to these claims further analysis with regard to other aspects of patentability of these claims is precluded.
Liquid crystal and authenticating mark in the form of patterns, characters or codes
In the interpretation of the claims I found that the phrase “patterns, characters, or codes” has two distinct uses within the claim. The first in relation to the liquid crystal and the second in relation to the authenticating mark. Although there is some difficulty in ascertaining the meaning of this aspect of the claim, it is still considered to meet the threshold of clarity provided in Décor Corp v Dart Industries (supra).
Novelty
The Opponent argued the following documents anticipate the claimed invention:
• D1: WO 03/061980 (Exhibit IDL-1)
• D2: WO 2005/128055 (Exhibit (IDL-2)
• D3: US 5,678,863 (Exhibit IDL-3)
• D4: EP 1281538 (Exhibit IDL-4)
• D8: WO 2005/105474 (Exhibit DIL-1)I will consider these documents in reverse order for two reasons. Firstly, this is the order in which the documents were discussed in the hearing. Secondly, the last document (D8) is considered the closest prior art document and the discussion of this document will help elucidate the crucial aspects of the invention.
Whole of contents
Documents that are published before the priority date are part of the prior art base as defined in part (a) of the definition of “prior art base” in Schedule 1 of the Act.
Documents that are published after the priority date may form part of the prior art base as defined in part (b)(ii) if the three additional conditions are met. These are known as “whole of contents” prior art documents.
The definition of “prior art base” given in Schedule 1 of the Act is reproduced below:
"prior art base" means:
(a) in relation to deciding whether an invention does or does not involve an inventive step or an innovative step:
(i) information in a document that is publicly available, whether in or out of the patent area; and
(ii) information made publicly available through doing an act, whether in or out of the patent area.
(b) in relation to deciding whether an invention is or is not novel:
(i) information of a kind mentioned in paragraph (a); and
(ii) information contained in a published specification filed in respect of a complete application where:
(A) if the information is, or were to be, the subject of a claim of the specification, the claim has, or would have, a priority date earlier than that of the claim under consideration; and
(B) the specification was published on or after the priority date of the claim under consideration; and
(C) the information was contained in the specification on its filing date.
Documents D2 and D8 are both PCT applications. A PCT application which has designated Australia is treated as an Australian patent application under the Act. The priority dates of D2 and D8 are 10 June 2004 and 30 April 2004 respectively which is before the priority date (12 August 2004). The priority documents were adduced in the further evidence. I have reviewed the priority documents and am satisfied that documents D2 and D8 are entitled to the priority dates claimed. Consequently, documents D2 and D8 satisfy condition (A).
Documents D2 and D8 were published on 22 December 2005 and 10 November 2005 respectively. These publications were made after the priority date (12 August 2004) of the presently opposed application. Consequently, documents D2 and D8 satisfy condition (B).
Documents D2 and D8 are unamended and thus it logically follows that the information contained in those specifications was the same information at each of their filing dates. Consequently, documents D2 and D8 satisfy condition (C).
In summary, documents D2 and D8 have satisfied the conditions necessary for documents to be considered prior art documents under part (b)(ii) of the definition of prior art base. Under section 7(1)(c) these are relevant prior art documents in the consideration of novelty (i.e. they are ‘whole of contents’ prior art documents). Notably, these documents are not prior art in the consideration of inventive step.
D8 (WO 2005/105474)
It is noted that D8 is written in the German language. During the hearing, the Opponent assumed that the US equivalent patent (US 2007/0216518) of D8 disclosed the same information as D8, and referred to the US equivalent for convenience. The Applicant protested that there was no evidence to support this assumption. After the hearing the Opponent requested, and leave was granted, to adduce further evidence relevant to this point of contention. Exhibit KWB-3 is the certified English translation of D8.
I have reviewed the certified English translation of D8 and compared it to the US equivalent patent (US 2007/0216518). I am satisfied that the information in these two documents is essentially the same, thus justifying the Opponent’s reference (during the hearing and in the submissions) to the US equivalent rather than the original document D8. In the interests of consistency with the submissions made by both parties, I will also refer to the US equivalent patent (US 2007/0216518) interchangeably with D8 throughout this decision.
The most relevant embodiment in US 2007/0216518 is given at paragraphs 99 and 100:
“In one exemplary embodiment, the security element 162 comprises a layer sequence comprising cholesteric and/or nematic liquid crystal layers applied on a transparent foil, as depicted in FIG. 2, albeit without the dark background layer 22. The layers can be applied contiguously or also only in some areas, to form different or complementary motifs. Also the layer sequence as such can be present on the transparent foil in the form of a motif. The security element 162 is present in a window, manufactured with papermaking technology or diecut, of the banknote 160 and, in the unfolded state of the banknote, appears substantially transparent and inconspicuous in reflected light or transmitted light.
In this exemplary embodiment, the dark background layer, which is essential for the perceptibility of the color or polarization effects described, is provided by the separate display element 164 and can be formed, for example, by a commercially available printing ink imprinted on one side of the banknote. Only when the banknote, as in FIG. 12(b), is folded such that the security element 162 comes to rest on the display element 164 can the color and/or polarization effects provided be perceived. In the exemplary embodiment, after the banknote 160 is folded, a crest motif 168 that was not previously perceptible appears. It is understood that a motif can likewise be present in the display element 164, especially in addition to the motif in the security element 162, the two motifs, if applicable, being able to complement each other and thereby form a code.”
This disclosure provides a reasonably clear disclosure of all features in the claim 4 of the presently opposed patent application except feature (f), i.e. the feature of “the authenticating mark, in transmitted light, imparts a first optical impression”.
The Opponent argues that D8 also has a disclosure of marking the substrate with characters and/or patterns. Paragraph 5.19 of the Opponent’s submissions state:
“[T]he transparent substrate is laser marked or printed with characters and/or patterns [0021], the security element is applied to the transparent window of a banknote [0034] so when the security element is viewed in transmission [0099], only the laser marked substrate is displayed”
I am not convinced that the disclosure in paragraph 21 can be read as a single embodiment with the disclosure at paragraphs 99 and 100 for two reasons. Firstly, paragraph 99 states (with my emphasis added):
“The security element 162 is present in a window, manufactured with papermaking technology or diecut, of the banknote 160 and, in the unfolded state of the banknote, appears substantially transparent and inconspicuous in reflected light or transmitted light.”
Secondly, paragraph 99 also states (with my emphasis added):
“In one exemplary embodiment, the security element 162 comprises a layer sequence comprising cholesteric and/or nematic liquid crystal layers applied on a transparent foil, as depicted in FIG. 2, albeit without the dark background layer 22.”
Both of these excerpts strongly suggest that the embodiment disclosed in paragraph 99 and 100 does not include any authenticating mark that would be visible in transmitted light.
Therefore, feature (f) of the claimed invention (the authenticating mark, in transmitted light, imparts a first optical impression) is not disclosed in D8.
D4 (EP 1281538)
The Applicant argues that two of the features were missing from this document: a transparent/translucent substrate, and liquid crystal in the form of patterns, characters or codes.
Transparent or translucent substrate
Paragraph 6 of D4 states:
“The inventors of the present invention have found that the above aims can be fulfilled by providing an optically variable marking comprising a semiopaque substrate with a first surface that is covered with an optically variable layer, and a second surface that is covered with metal layer a part of which is removed in the shape of a pattern.”
The Applicant argued that a semiopaque substrate could not be considered transparent or translucent.
In my opinion, the semiopaque substrate can be considered translucent since the purpose of the substrate is to allow and utilise some transmission of light. For example paragraph 7 of D4 states:
“The optically variable marking according to the present invention overcomes the limitations of EP 0 435 029 by having both reflective and transmissive views possible.”
Therefore, feature (b) of the claimed invention (a transparent or translucent substrate) is disclosed in the D4.
Liquid crystal in the form of patterns, characters or codes
The Opponent argues that D4 discloses liquid crystal to be in the form of patterns, character or codes. The Opponent referred to paragraph 11 where it states:
“The term 'marking' includes films or layers covering the entire area of a substrate, as well as markings covering discrete regions of a substrate for example in the shape of a regular pattern or image.”
The Opponent argued that the markings referred to in this sentence were in fact patterns of liquid crystal. I can find no support for this interpretation. The liquid crystal is applied as a uniform layer across the substrate, and it is the metal layer which is removed in the shape of a pattern.
The Opponent alternatively argues that it is the authenticating mark as a whole, and not the liquid crystal alone that needs to be in the form of patterns, character or codes. I have previously found when construing the claims that the liquid crystal needs to be in the form of patterns, character or codes, thus obviating this argument.
Therefore, feature (e) of the claimed invention (Liquid crystal in the form of patterns, characters or codes) is not disclosed in D4.
Consequently, I conclude that D4 does not disclose all the features of the independent claim.
D3 (US 5,678,863)
The Applicant submitted that several of the claimed features were absent from D3. I consider most of the features to be clearly disclosed in D3, and will consider in detail only features (e) and (h).
Liquid crystal in the form of patterns, characters or codes
The Opponent argues that a pattern, character or code of liquid crystal is disclosed in D3 at column 6 lines 12 to 15:
“The liquid crystal material could be incorporated in many other ways, for example, as a windowed thread. The thread could be formatted against a dark background at some points and a transparent background at other points.”
I am not satisfied that this disclosure of a ‘windowed thread’ provides clear and unmistakable directions to a liquid crystal in the form of a pattern, character or code.
Feature (e) of the claimed invention (liquid crystal in the form of patterns, characters or codes) is not disclosed in D3.
In light reflected against a highly absorptive, dark background surface
D3 discloses at column 6 lines 13 to 15:
“The thread could be formatted against a dark background at some points and a transparent background at other points.”
The disclosure of D3 is a background with areas of both dark and transparency. I do not consider this sporadic dark and transparent background disclosed in D3 to fall within the scope of a highly absorptive background surface as defined in the claims.
Feature (h) of the claimed invention (light reflected against a highly absorptive, dark background surface) is not disclosed in D3.
Consequently, I conclude that D3 does not disclose all the features of the independent claim.
D1 (WO 03/061980) and D2 (WO 2005/128055)
The Opponent noted that the disclosures of D1 and D2 were quite similar, and that the interpretation of one of these documents was applicable to the others. I agree with this approach and will consider these documents together.
Liquid crystal in the form of patterns, characters or codes
The Opponent argues that it is the authenticating mark as a whole, and not the liquid crystal alone that needs to be in the form of patterns, character or codes, and thus D1 and D2 disclose feature (e). However, I have previously found in construing the claims that the liquid crystal must be in the form of patterns, character or codes, thus obviating this argument.
Therefore, feature (e) of the claimed invention (Liquid crystal in the form of patterns, characters or codes) is not disclosed in D1 or D2.
In light reflected against a highly absorptive, dark background surface
The Applicant argues that the devices of D1 and D2 are not disclosed to be used against a black background, since a dark resist is part of the devices disclosed in D1 and D2. I agree that D1 and D2 do not disclose viewing the security device against a black background. It is simply too strained a construction to say that part of the authenticating mark is itself a background.
Therefore, feature (h) of the claimed invention (light reflected against a highly absorptive, dark background surface) is not disclosed in D1 or D2.
Consequently, I conclude that neither D1 nor D2 disclose all the features of the independent claim.
Inventive step
The relevant portions of Section 7 of the Act state:
(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:
...
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 ...
The test for obviousness is whether it would have been a matter of routine to proceed to the claimed invention. In Wellcome Foundation Ltd v V.R. Laboratories (Aust.) Pty Ltd [1981] HCA 12, Justice Aickin stated:
“The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.”
The person skilled in the art
The Opponent states at paragraph 6.7 of their submissions:
“…the skilled addressee must be a person who is completely familiar with the development and production of security features for value documents.”
I agree with this assessment of the qualities possessed by a person skilled in the art.
There was evidence from a single person who could be considered an expert, Dr Franco Moia. The opponent states in their submissions at paragraph 6.9:
“Dr Franco Moia has more than 15 years experience in the field of optical security devices for documents. In particular, he has expertise in the field of liquid crystal polymers for use in optically variable security devices.”
Dr Moia’s evidence is given significant weight. There is no other evidence that controverts Dr Moia’s evidence. The Applicant states:
“Dr Moia is not qualified to give evidence on what was common general knowledge [‘CGK’] in Australia at the relevant date. His connection with Australia is very limited, and there is no probative evidence showing that he was familiar with CGK in Australia at the priority date. Moreover, Dr Moia’s mere references to ‘well known’ cannot be assumed automatically to mean ‘well known’ in Australia.
Dr Moia’s assertion that a person working in the field of liquid crystal polymers as security features in Australia would have the equivalent common general knowledge as a person working in the field of liquid crystal polymers as security features ‘elsewhere’ in the world is vague and unsupported hyperbole. It would seem incredible to equate CGK in Australia to CGK anywhere in the world. This would suggest that CGK in Australia was at the highest level anywhere in the world. This broad statement would appear to be mere speculation.”
I am satisfied that Dr Moia can provide relevant opinion with regard to the state of common general knowledge within Australia at the priority date. Only evidence from another expert that contradicted Dr Moia’s opinion would raise doubt about its relevance.
The Applicant states in their submissions:
“Dr Moia’s stated opinions in relation to what would have been obvious to a person skilled in the art must be given little weight. First, Dr Moia admits to being the inventor on no fewer than 14 different patent families. Clearly, he has above average inventive capacity and his opinion on what would have been obvious a person skilled in the art would be clouded by his own demonstrated inventiveness.”
I am satisfied that Dr Moia can provide relevant opinion with regard to what a non-inventive PSA could be expected to know and do. I am mindful that there may be a difference between what Dr Moia would do as opposed to what a notional person skilled in the art would do, and it is for me to decide if and when such a divergence occurs. As above, only evidence from another expert that contradicted Dr Moia’s opinion would raise doubt about its relevance.
The Applicant states:
“…Dr Moia admits to having previously worked with opponent. He also gave evidence for the opponent in Innovia Security Pty Ltd v Leonhard Kurz GmbH & Co. KG [2013] APO 56 (9 October 2013). Dr Moia cannot be considered to be a truly independent or disinterested witness.”
I also reject the suggestion that Dr Moia’s opinion is biased in favour of the Opponent. The default assumption (especially in the absence of contrary evidence) must be that a professional’s opinion about technical matters is substantially free of bias.
The problem
The description states:
“…[T]he preferred object of the present invention is to specify a generic security element that avoids the disadvantages of the background art. In particular, the security element should be difficult to imitate and able to be checked for authenticity with simple auxiliary means that are available nearly everywhere.”
I accept that this is the problem to be overcome.
Ascertained, understood and regarded as relevant
The Opponent states at paragraph 7.26:
“As discussed in paragraphs 10 and 11 of the Moia Declaration, being aware of relevant patent publications is a necessity for those working in this field, and this was also the case at the priority date. Given the prominent role that patents play in the reference material consulted by skilled addressees in this field, documents D1 and D3 to D7 would have been ascertained, understood and regarded as relevant by the addressee at the priority date.”
I agree. A person skilled in the art would review patents in the art. I consider documents D1 and D3 to D7 would be readily ascertained, understood and regarded as relevant.
Obviousness
I note that the evidence provided by Dr Moia, as it pertains to the obviousness of the claimed invention, is of less assistance than it could otherwise have been since his evidence was made in relation the claims as they were before the amendments to the specification were made.
In light of common general knowledge alone
In construing the claims I have determined that claim 4 defines an invention that contains eleven features. Although these features may be known individually I am not satisfied, on the basis of the evidence available, that the combination of features as claimed is obvious in light of the common general knowledge.
In light of the prior art documents
D1 (WO 03/061980)
I found in the novelty analysis that D1 was missing two of the eleven features present in claim 4: the liquid crystal in the form of patterns (feature (e)), and viewing the device against a dark background (feature (h)).
I can see no motivation for a person skilled in the art when presented with D1 to make those modifications as a matter of routine. There is no evidence provided by the Dr Moia on why such modifications to D1 would be made.
Consequently, the invention defined in independent claim 4 and all claims dependent thereon (claims 5 to 23) and the omnibus claim 24 are inventive in light of D1.
D3 (US 5,678,863)
I found in the novelty analysis that D3 was missing two of the eleven features present in claim 4: the liquid crystal in the form of patterns (feature (e)), and viewing the device against a dark background (feature (h)).
Similarly to the reasoning given for D1 above, I can see no motivation for a person skilled in the art when presented with D3 to make those modifications as a matter of routine, nor is there any evidence to explain why such modifications would be made.
Consequently, the invention defined in independent claim 4 and all claims dependent thereon (claims 5 to 23) and the omnibus claim 24 are inventive in light of D3.
D4 (EP 1281538)
In the novelty analysis I found that D4 is missing one of the eleven features present in claim 4: the liquid crystal in the form of patterns (feature (e)). Similarly as above, I can see no motivation for a person skilled in the art when presented with D4 to make those modifications as a matter of routine, nor is there any evidence to explain why such modifications would be made.
Conclusion on obviousness for D1, D3 and D4
Consequently, the invention defined in independent claim 4 and all claims dependent thereon (claims 5 to 23) and the omnibus claim 24 are inventive in light of D1, D3 and D4.
The other prior art documents
The extent of submissions on the lack of inventive in light of the other prior art is encompassed by paragraph 8.2 of the Opponent’s submissions:
“In light of the amendments, all the amended claims lack inventive step in view of the common general knowledge alone, or in combination with one or more of D1, D3 to D7 and D9 to D17.”
I have reviewed documents D5-D7 and D9-D17 (provided in the Exhibits of the Evidence in Support) and conclude that they are less relevant to the question of inventive step than those documents already considered (D1, D3 and D4). I can see no motivation, nor has the evidence shown, that a person skilled in the art would modify these documents, or combine the teaching of these documents, such that the resulting modifications or combinations would fall within the scope of claim 4.
The invention defined in independent claim 4 and all claims dependent thereon (claims 5 to 23) and the omnibus claim 24 are inventive in light of D5-D7 and D9-D17.
Manner of manufacture
The particular with regard to this ground are as follows:
“Each of the features of at least claim 1 was well known in the art at the priority date, noting 2.2.1 to 2.2.9 above. They form a mere collocation of known integers which do not produce a new result.”
As is clear from the considerations of novelty and inventive step there is a prima facie difference between the present invention and the prior art. Thus, on its face, the claimed invention is new. Therefore I am satisfied that the invention defined in claims 4-24 is a manner of manufacture.
Conclusion
Claim 1 and all dependent claims are not clear. The opposition is successful on this ground.
Claim 1 and dependent claims (claims 2, 3 and 6-23 when dependent on claim 1) are considered so unclear that no assessment of other grounds of opposition can be made.
Claim 4 and all claims dependent thereon (claims 5-23 when dependent on claim 4) and omnibus claim 24 are considered clear, novel, inventive and a manner of manufacture.
I consider that amendments could be made to overcome the deficiencies I have found with the clarity of the claims. I allow the Applicant 60 days from the date of this decision to file amendments consistent with the findings in this decision.
Costs
It is usual for costs to follow the event. However, there are three atypical aspects of this opposition that must be taken into consideration when determining the costs: the amendments made to the Statement of Grounds and Particulars, the amendments made to the specification during the opposition, and the Opponent’s request to adduce further evidence after the hearing.
Amendments made to the Statement of Grounds and Particulars
The Opponent served a Statement of Grounds and Particulars on 10 August 2011 and a request to amend the Statement of Grounds and Particulars was made on 20 August 2012.
It was only in the amended Particulars (specifically, the Particular 4.7 regarding clarity) which ultimately formed the basis for a successful ground of opposition.
Amendments made to the specification during the opposition
The Applicant requested to amend the specification on 10 January 2013, after the Opponent had served their evidence in support on 20 August 2012. The amendments resulted in the deletion of two independent claims (claims 1 and 3), significant change to one of the independent claims (formerly claim 5, renumbered as claim 1), and the change from a dependent claim to an independent claim (claim 8, renumbered as claim 4).
The Applicant states in their letter requesting the amendment:
“The amendments are of a voluntary nature, and the amendment request should not be interpreted as an admission that any ground of the opposition is valid or has been made out.”
I am not convinced by this disclaimer. The timing of the amendments (after the evidence in support had been served) and significant changes made by amendments both strongly suggest the amendments were made to avoid an adverse finding in the opposition.
The Opponent’s request to adduce further evidence after the hearing
The request for further evidence by the Opponent was made after it became apparent during the hearing that there was not enough evidence to support the ground of novelty for the ‘whole of contents’ prior art documents. It is lamentable that the Opponent did not adduce this evidence in their evidence in support.
Summary on costs
By amending the specification during the opposition the Applicant essentially concedes that the application was not valid before that amendment. The Applicant’s amendments to the specification were made after the Opponent’s amendments to the Statement of Grounds and Particulars, thus removing any argument that the application was not successfully opposed at any stage. Indeed, the fact that the Applicant made amendments to the specification even with full awareness of an ultimately successful ground of opposition reinforces my opinion that the Opponent has, at all times in the opposition, successfully opposed the grant of the patent.
The fact that further evidence was adduced does not warrant a variation of costs for two reasons in this case. Firstly, the further evidence did not play a significant role in the opposition, and its absence would not have altered the outcome of the decision. Secondly, the Applicant was not significantly adversely affected by the further evidence. I also note that there are no costs associated with further evidence, so although other items of costs could be varied on the basis of the inconvenience caused by the belated further evidence, it is not appropriate in this case for the two aforementioned reasons.
Costs are awarded against the Applicant, Giesecke & Devrient GmbH, according to Schedule 8.
Xavier Gisz
Delegate of the Commissioner of Patents
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