Innovia Security Pty Ltd v Graphic Security Systems Corporation
[2014] APO 9
•18 February 2014
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Innovia Security Pty Ltd v Graphic Security Systems Corporation [2014] APO 9
Patent Application: 2007284106
Title:Self-authenticating documents with printed or embossed hidden images
Patent Applicant: Graphic Security Systems Corporation
Opponent: Innovia Security Pty Ltd
Delegate: Ranganath Subbarayan
Decision Date: 18 February 2014
Hearing Date: 26 November 2013, in Canberra
Catchwords: PATENTS – section 59 – opposition to the grant of a patent - self-authenticating security article – novelty – whether cross-references to continuation-in-part applications sufficient to treat documents as single source of information – inventive step – opposition successful – claims novel but lack inventive step
Representation: Patent applicant: Matthew Ward, Shelston IP
Opponent:J Roger Green, Watermark
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2007284106
Title:Self-authenticating documents with printed or embossed hidden images
Patent Applicant: Graphic Security Systems Corporation
Date of Decision: 18 February 2014
DECISION
Claims 4 and 8 lack clarity and claims 1-14 lack an inventive step over various prior art.
I allow the applicant 60 days from the date of this decision in which to propose suitable amendments.
Costs awarded against the applicant.
REASONS FOR DECISION
BACKGROUND
Application 2007284106 in the name of Graphic Security Systems Corporation is a national phase application in Australia of PCT International Application PCT/US2007/075353 filed on 7 August 2007 and claims an earlier priority date of 18 August 2006. It was advertised as accepted on 15 September 2011. On 15 December 2011, a notice of opposition to the grant of the patent under s59 of the Act was filed by Securency International Pty Ltd who subsequently changed their name to Innovia Security Pty Ltd.
The matter was heard in Canberra on 26 November 2013.
THE OPPOSITION
As a consequence of the Intellectual Property Legislation Amendment (Raising the Bar) Act 2012, there are substantial changes to the Patents Act 1990. In the case of the present application the grounds of opposition are governed by the Patents Act in force before 15 April 2013.
Innovia opposed the grant of the application on the following grounds:
- Novelty (subsection 18(1)(b)(i))
- Inventive step (subsection 18(1)(b)(ii))
- Manner of manufacture (subsection 18(1)(a))
- Clarity and Fair Basis (subsection 40(2) or 40(3))
- Utility (subsection 18(1)(c))
EVIDENCE
Evidence in support which was completed on 8 March 2013 includes the following:
- Statutory Declaration dated 21 February 2013 by Bruce Alfred Hardwick along with Exhibits BAH-1 to BAH-29.
- Statutory Declaration dated 28 February 2013 by Glenyse Joyce Duke with Annexes A and B.
The applicant did not file any evidence in answer.
SPECIFICATION
The invention relates to security documents that have an encoded hidden image and a decoder incorporated within the document so that the document can be authenticated by overlying the decoder on the encoded image and viewing the hidden image through the decoder.
The specification states that security documents like currency, cheques, tickets often have security features like special indicia or patterns imposed upon the document by printing or other processes to prevent ready duplication. The indicia or patterns can also include encoded hidden images that will be visible only when viewed through a decoding screen or lens. These encoded images are usually imposed upon the security document by some type of printing process.
The invention of the present application uses digital techniques to encode a hidden image into a source image which is then applied to the security document either by printing or by surface geometry reformation techniques like embossing and etching. The encoded image can be decoded with a lens that is also built into the document and which has a frequency that corresponds to that of the encoded image.
The specification ends with fourteen claims which read as follows:
1. A method of producing a self-authenticating article comprising:
providing a document comprising a substrate having an image receiving surface and a decoder lens having a lens frequency and being configured for optically decoding corresponding encoded indicia viewed therethrough, the document being configured so that the decoder lens may be selectively positioned to overlie the image receiving surface to decode encoded indicia formed thereon;
digitally encoding a source image to produce a rasterized encoded image having a raster frequency corresponding to the lens frequency; and
applying the encoded image to the image receiving surface of the substrate,
wherein the image receiving surface has a surface geometry that is initially substantially flat and the action of applying the encoded image is defined by reforming the surface geometry of the image receiving surface to include a plurality of alternating topographical features that collectively correspond to the encoded image, said surface geometry reformation being made independently of the application of visible print media indicia.
2. The method of claim 1 wherein the document comprises a plurality of pages, a first page comprising the substrate and a second page comprising the decoder lens.
3. The method of claim 1 or claim 2 wherein the substrate is formed from a plastic paper substitute.
4. The method of any one of the preceding claims wherein the action of applying the encoded image includes applying a print medium to the image receiving surface.
5. The method of any one of the preceding claims wherein the action of reforming the surface geometry includes at least one of the set consisting of embossing the substrate, debossing the substrate, and removing material from the substrate.
6. The method of any one of the preceding claims wherein the decoder lens is a lenticular lens.
7. The method of any one of the preceding claims wherein the action of digitally encoding a source image includes:
providing a secondary image for use as a latent image to be embedded into the source image;
rasterizing the source image at the raster frequency to form a plurality of source image raster elements;
mapping the secondary image to the source image; and shifting the source image raster elements at locations corresponding to content of the secondary image.
8. A self-authenticating article comprising:
a substrate having an image receiving surface;
a lenticular lens having a predetermined lens frequency, the lenticular lens being configured for optically decoding encoded indicia viewed therethrough and being attached to the substrate so that the lens can be selectively positioned to overlie the image receiving surface to decode encoded indicia applied thereto; and
an encoded image on the image receiving surface, the encoded image being defined by encoded indicia formed as variations in surface geometry of the image receiving surface, said surface geometry variations being independent of visible print media.
9. The self-authenticating article of claim 8 wherein the surface geometry variations comprise depressed and non-depressed surface areas that combine to define at least a portion of the indicia.
10. The self-authenticating article of claim 8 wherein the surface geometry variations comprise raised and non-raised areas surface areas that combine to define at least a portion of the indicia.
11. The self-authenticating article of any one of claims 8 to 10 wherein the self-authenticating article comprises a plurality of pages, a first page comprising the substrate and a second page comprising the lenticular lens.
12. The self-authenticating article of any one of claims 8 to 11 wherein the substrate is formed from a plastic paper substitute.
13. A method of producing a self-authenticating article substantially as herein described with reference to any one of the embodiments of the invention illustrated in the accompanying drawings and/or examples.
14. A self-authenticating article substantially as herein described with reference to any one of the embodiments of the invention illustrated in the accompanying drawings and/or examples.
Clarity and Fair Basis
At the hearing it became clear that there are claim construction issues that can impact on the scope of the claims and I will therefore try and resolve these before I proceed with the grounds of novelty and inventive step.
There was a difference of opinion between the parties as to what is meant by the phrase “surface geometry reformation being made independently of the application of visible print media indicia” in claim 1 and the similar phrase “said surface geometry variations being independent of visible print media” in claim 8.
The applicant submitted that the correct construction for these phrases is that the surface geometry variations are produced without the application of visible print media such as inks. They also argued that the use of the phrase “visible print media” in claim 8 instead of “visible print media indicia” as in claim 1 does not lead to a different construction for each of these claims.
The opponent on the other hand argued that while “visible print media indicia” refers to visible indicia produced by printing, “visible print media” refers to the substrate on which the visible indicia are printed.
The correct approach to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70, 81 IPR 228 at [118] – [120]:
"the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear ... while the claims define the monopoly claimed in the words of the patentee's choosing, the specification should be read as a whole ... it is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification ... terms in the claim which are unclear may be defined or clarified by reference to the body of the specification".
In the present instance I think it is legitimate to refer to the body of the specification to clarify what is meant by these terms. There are a number of references to the term print media in the specification. For example in paragraph [0022] it states “Encoded images may be applied to a substrate through the application of ink or other print media”; in paragraph [0032] it states “The encoded image may be applied to the substrate 102 by applying a visible or transparent print medium or by embossing or debossing the surface of the substrate 102”; in paragraph [0038] it states “If a print medium is used the print medium may comprise ordinary inks, special inks …………..powders that may be baked on to the substrate, light sensitive materials such as silver salts or azo dyes and the like” and in paragraph [0040] it states “As an alternative to application of print medium, encoded images may be applied to a substrate by reforming the surface geometry of the substrate in a manner that corresponds to the encoded image elements” and “Such surface geometry variations may be made independently of visible print media indicia”.
When the claims are read in light of the above statements in the description, it is clear that the term “visible print media” refers to media such as inks that are used to produce visible indicia and “visible print media indicia” refers to indicia images produced by the application of such visible print media.
Therefore in my view the correct construction that should be given to the phrase “surface geometry reformation being made independently of the application of visible print media indicia” in claim 1 is that the surface geometry reformation of the substrate to create the encoded images is carried out by processes that are separate or distinct from the processes used to apply visible printed indicia or images on the substrate. In other words the process of surface reformation does not involve the use of visible printing inks. It does not however preclude the use of transparent inks or the surface reformation of a previously created visible printed image or indicia.
In relation to claim 8, in my view the phrase “said surface geometry variations being independent of visible print media” cannot be given a similar construction. Unlike claim 1, it does not define that the steps or processes in creating the surface geometry reformation do not include the application of visible print media. It merely requires that the surface geometry variations are independent of visible print media which I have earlier found refers to media such as printing ink. This definition would clearly preclude the surface reformation of a previously created visible printed image or indicia even if such reformation is done without the use of visible print media and such a construction is clearly not what was put forth by the applicant. I therefore find that this phrase in claim 8 is unclear.
However for the purposes of assessing the novelty and inventive step of claim 8, I will apply a similar construction to that of claim 1, namely that the surface geometry variations have been created without the use of visible printing inks.
The opponent pointed out that claim 4, which is dependent on claim 1, defines that the action of applying the encoded image includes applying a print medium to the image receiving surface and that this is clearly contradictory to what is defined in claim 1. At the hearing the applicant conceded that claim 4 was in error and that they are prepared to delete this claim. I see no reason not to accept this explanation and the construction that I have given to claim 1 therefore stands.
The opponent also submitted that the term “substantially” in the phrase “substantially flat” in line 10 renders the scope of the claim indefinite. I can see no issues with this term. It would be clear to a person skilled in the art that this term has been used to cover any minor variations from perfectly flat. This term is therefore clear.
The opponent also argued that claim 1 is not fairly based on the specification as it merely specifies a decoder lens and is not limited to a lenticular lens and as the specification fails to disclose any decoder lens other than a lenticular lens claim 1 defines subject matter that travels beyond the disclosure of the description.
While the preferred embodiment of the specification discloses the use of a lenticular lens, there is nothing in the description to suggest that this is an essential feature of the invention. The consistory statement in paragraph [0009] discloses “a decoder lens having a lens frequency” without in any way limiting it to a lenticular lens. I also note that while claim 1 does not define a lenticular lens, it clearly defines the encoded image and the lens to have matching frequencies as required with a lenticular lens. I am therefore satisfied that the feature “decoder lens” in claim 1 is fairly based on the specification.
NOVELTY
The question of novelty is determined under the provisions of subsection 7(1) of the Patents Act (Cth). The basic test for novelty is the "reverse infringement test" as set out in Meyers Taylor Pty Ltd v Vicarr Industries [1977] HCA 19; (1977) 137 CLR 228 at page 235 where Aickin J stated:
"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged invention would if the patent were valid, constitute an infringement."
Infringement is said to occur where "each and every one of the essential features of that claim have been taken" (Rodi and Wienenberger AG v. Henry Showell Ltd (1969) RPC 367).
However, as noted in Pfizer Overseas Pharmaceuticals v Eli Lilly and Company [2005] FCAFC 224 (see paragraphs 311 et seq), it is not sufficient for a citation to contain all the essential features of the claim, there must be “clear and unmistakable” directions to the claimed invention.
D1: US 2005/0057036
The opponent submitted that independent claim 8 lacks novelty over patent specification D1: US 2005/0057036 filed as exhibit BAH-15.
D1 discloses a self-authenticating article which in a first embodiment comprises a substrate having an image receiving surface, an encoded image on the image receiving surface, a lenticular lens configured for optically decoding the encoded indicia viewed therethrough and being attached to the substrate so that the lens can be selectively positioned to overlie the image receiving surface to reveal the hidden image through moiré effects, which as I understand requires the encoded image and the lens to have corresponding frequencies. In relation to the feature of the encoded image being formed as variations in surface geometry of the image receiving surface, the opponent relied upon paragraph [0056] where it states that the encoded image can include printed line structures in combination with embossments which have been preferably created by intaglio printing and these will become visible when viewed through the lens. They also referred to paragraph [0063] where it states that the encoded image may include a zone with suitable perforation. They argued that intaglio printing using invisible inks and perforations are clearly surface geometry variations independent of visible print media.
The applicant on the other hand argued that the reference to embossments is in relation to enhancing the tilt effect as opposed to any form of encoded image. In relation to the perforations they submitted that they are not variations in surface geometry of the image receiving surface and also that this is with reference to a third embodiment which uses moiré patterns and not encoded images and lenticular lenses.
While I am in agreement with the opponent that the embossments disclosed in paragraph [0056] would fall within the scope of surface geometry variations and can be considered to be part of the encoded image, it is disclosed in combination with printed line structures and is said to be preferably created using intaglio printing. There is nothing to clearly suggest that the intaglio printing can be done with invisible ink or that the embossments can be formed by non-printing techniques.
Again while the use of perforations disclosed in paragraph [0063] would fall within the scope of surface geometry variations, this embodiment does not use a lenticular lens as required in claim 8, but instead relies on a similarly perforated screen to form a moiré pattern.
Claim 8 is therefore distinguished from and novel over D1.
D3, D5, D6, D7, D11, D12 and D13 as a single source of information
The opponent submitted that claims 1-14 lack novelty when the following documents are combined and considered as a single source of information:
D3: US 2006/0177057 (Exhibit BAH-18)
D5: US 2005/0184504 (Exhibit BAH-23)
D6: US 2006/0119097 (Exhibit BAH-24)
D7: US 5708717 (Exhibit BAH-19)
D11: US 2005/0123134 (Exhibit BAH-26)
D12: US 6859534 (Exhibit BAH-25)
D13: US 3937565 (Exhibit BAH-12)
They provided the following reasons as to why these documents could be combined and treated as a single source of information.
· All the above mentioned documents were collectively brought to the attention of the opponent as a result of a query regarding the patent activity of the inventor Alfred Alasia and his employer Graphic Security Systems Corporation.
· Documents D3, D5, D6, D7, D11, D12 all refer to D13 and incorporate its entire contents by cross reference and D3, D5, D6 and D11 each incorporate the entire contents of D7 and D12 by cross reference.
The applicant made the following submissions in rebuttal:
· While they acknowledge that some of these documents are linked by convoluted patent relationships, these may be in place due to nuances of US patent law.
· There is nothing in the evidence to suggest that a person skilled in the art would understand and/or be influenced by such relationships.
· Although some cross references do exist, differences between language and embodiments between the patent documents creates substantial challenges in combining their teachings at a practical level.
· The later document D3 does not reference earlier documents D5 or D6.
Documents D3, D11 and D12 each disclose the features of digitally encoding a source image to produce a rasterized encoded image having a raster frequency, applying the encoded image to the image receiving surface of the substrate by embossing and a separate lenticular decoder lens to decode the encoded image. The opponent submitted that the embossed holographic encoded image disclosed in these documents would fall within the scope of reforming the surface geometry to create alternating topographical features and being made independently of the application of visible print media indicia.
Documents D5 and D6 each disclose the features of digitally encoding a source image to produce a rasterized encoded image having a raster frequency, applying the encoded image to the image receiving surface of the substrate by printing and a lenticular decoder lens with a matching frequency to decode the encoded image. The decoder is part of the article and the article is therefore self-authenticating.
Document D7 discloses the features of digitally encoding a source image to produce a rasterized encoded image having a raster frequency, applying the encoded image to the image receiving surface of the substrate by printing and a separate lenticular decoder lens to decode the encoded image.
Document D12 which is the earliest document in this portfolio of Alasia patents, discloses the features of encoding a source image through analogue techniques, applying the encoded image to the image receiving surface of the substrate by printing, and a separate lenticular decoder lens to decode the encoded image.
The issue of combining documents to treat them as a single source of information was considered by the full Federal Court in Nicaro Holdings Pty Ltd v Martin Engineering Co, (1990) 16 IPR 545 where the court stated as follows:
“The invention must appear in a single disclosure, so it is not permissible to make a pattern or mosaic of or to read together various pieces of prior art in different patents. It is however, permissible, to refer not only to the patent relied on as the source of disclosure but to another patent or other patents incorporated by reference provided that it is plain that the incorporation by reference unequivocally and plainly demonstrates that the draftsman has adopted the cross-referencing system solely as a shorthand means of incorporating a writing disclosing the invention.”
“In the case of combination patents cross-references in one specification which has some of the elements of a combination patent to another specification which has other elements do not disclose the combination. The essential point is that it is the combination which must be disclosed in the case of a combination patent.”
In the present case, based on the opponent’s analysis of what features are disclosed by the seven documents, in order to anticipate independent claims 1 and 8, at the minimum the relationship between at least one of the documents D3, D11 or D12 and at least one of the documents D5 or D6 should be such that a person skilled in the art would treat them as a single source of information.
Documents D3, D11 or D12 clearly do not refer to either of the documents D5 or D6. However both D5 and D6 clearly state in the opening paragraphs that they are continuations of application 09/267420 which in turn is a continuation-in-part of document D12 and the contents of all of which are incorporated by reference.
As discussed earlier, both D5 and D6 disclose all the features of claims 1 and 8 except for the feature of the encoded image being applied by surface geometry reformation that is independent of the application of visible print media. This missing feature is alleged to be disclosed in D12.
The question that I need to answer is whether the reference to D12 in the opening paragraphs of D5 or D6 is sufficient to treat documents D5 and D12 and documents D6 and D12 as single sources of information.
It is clear from the authorities that I have stated above that a mere cross-reference to D12 or its incorporation by reference in the opening paragraph where it states the line of continuations from previous applications is not sufficient to treat them as a single source of information. What is required is a reference that unequivocally and plainly demonstrates that the draftsman has adopted the cross-referencing system solely as a shorthand means of incorporating the relevant disclosure of D12 within D5 or D6.
Nowhere in the body of the specifications of D5 or D6 other than in the opening paragraphs is there a reference to D12 or to any of its contents. If the draftsman had intended that the embossing or other alternate methods of applying the encoded image disclosed in D12 were to be incorporated in D5 or D6, I would expect that in the body of the specification there would be a clear reference to D12 when discussing the encoded image and how it is applied to the image receiving surface. I note that in paragraph 5 of the specifications of D5 and D6, while discussing prior art analogue systems for encoding, it clearly states “These principles and embodiments of U.S. Pat. No. 3,937,565, issued Feb. 10, 1976 and are hereby incorporated by reference”. It is such a kind of direct reference which compels the skilled reader to look beyond the disclosure of D5 or D6 that is required and not a mere statement to being a continuation or continuation-in-part of D12 and that its contents are incorporated by reference.
The argument that these documents were collectively identified when searching for inventions by the inventor or his employer is fanciful and hardly justification to treat them as single source of information.
Therefore in my view the relationship between documents D3, D5, D6, D7, D11, D12 through various cross-references to continuations and continuations-in-part and incorporation of contents by reference is not such that a person skilled in the art would treat them as a single of information. Therefore, no further analysis of the novelty of the invention in light of the combination of these documents is necessary.
D17: “Optical Document Security” by Rudolf L. van Renesse
The opponent also submitted that claims 1-6, 8-12 are not novel over the 3rd Edition of D17 filed as Exhibit BAH-6 as it discloses all of the features of these claims.
According to the opponent’s expert declarant Mr Hardwick, the book “Optical Document Security” by Rudolf L van Renesse is the benchmark text in the document security industry and is regularly consulted by people working in this field and this has not been disputed by the applicant.
Document D17 filed as exhibit is not the entire text but only comprises selected portions of the text which the opponent considered were relevant to the claimed invention.
The opponent highlighted various passages in D17 where they submitted the different integers of independent claims 1 and 8 are disclosed. For example, pages 92-94, 154-155 and 164 disclose self-authenticating documents with an integral decoder lens; pages 162, 163, 165 and 166 disclose digital encoding to produce a rasterized encoded image and pages 137-139 disclose blind embossed relief patterns as latent or hidden images.
The applicant argued that while most of the features are individually disclosed in various parts of D17, the claimed combination of encoded images formed as surface geometry variations and the use of a lens having a corresponding frequency to decode these encoded images was not disclosed.
D17 includes a separate section entitled “Screen-Decoded Images” where it discusses various types of encoded images that can be decoded with a screen or lens and includes examples of banknotes that employ such encoded images. Whilst I agree with the applicant that most of the references to encoded images in this section are primarily directed to encoded images applied by printing, I note that in pages 137-139 under the sub-heading “Transitory Images” it clearly discloses that transitory images can be produced as inkless relief patterns by blind embossing and that transitory images are hidden images that can also be visualised as moiré images by means of a matching overlay screen. In my view there is therefore a clear teaching in D17 of the use of blind embossed inkless relief patterns that can be decoded with a matching lens of corresponding frequency.
The features of digitally encoding a source image using rastering techniques and lenticular lens being integrated into the security document are also disclosed in some of the examples given in D17.
I am therefore satisfied that the different features of claims 1 and 8 are individually disclosed in various sections of D17. However that is not sufficient to deprive the novelty of the claimed invention. As stated in General Tire & Rubber Co v Firestone Tyre and Rubber Co Ltd [1972] RPC 457 at 485–486:
“To anticipate the patentee's claim the prior publication must contain clear and unmistakeable directions to do what the patentee claims to have invented: Flour Oxidizing Co. Ltd. v. Carr & Co. Ltd. (1908) 25 R.P.C. 428 at 457, line 34, approved in B.T.H. Co. Ltd. v. Metropolitan Vickers Electrical Co. Ltd. (1928) 45 R.P.C. 1 at 24, line 1). A signpost, however clear, upon the road to the patentee's invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee.”
This is clearly not the case in relation to D17. No single example given in D17 discloses the combination of an integral lens and an encoded image formed by surface geometry reformation without the use of printing inks. D17 lacks clear and unmistakeable directions to do what is defined in the claimed invention. In my view this finding is also fully consistent with the authorities in Nicaro Holdings (supra) that I have quoted earlier where it was clearly stated that it is the combination which must be disclosed in the case of a combination patent. The claimed invention is therefore novel over D17.
INVENTIVE STEP
Section 7 of the Patents Act states:
(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.
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 skilled addressee
The opponent submitted that the skilled addressee is a person who is completely familiar with production of security documents and the incorporation of optical security features for value documents and that their expert declarant Mr Hardwick clearly falls in this category.
It is clear from Mr Hardwick’s resume that he has thirty years of experience in bank note production including heading an R&D team responsible for developing Australian Commonwealth banknotes and three years in charge of all banknote production processes at Note Printing Australia Ltd. I have no doubt that that he is a person skilled in the art of the claimed invention.
The applicant did not dispute that Mr Hardwick is a person skilled in the art but expressed some concerns about his independence as an expert declarant as he has been in the employ of the opponent for many years.
Whilst it is clear from Mr Hardwick’s resume that he did work for the applicant till his retirement in 2005 that is no reason to conclude that his evidence is any way biased. Given that the applicant has chosen not to provide any expert evidence of their own, I have no option other than to rely on the evidence of Mr Hardwick in relation to what was common general knowledge in the art.
Common General Knowledge
The opponent submitted that Mr Hardwick’s evidence establishes that the following were common general knowledge in the art in Australia at the priority date of the application:
· Bank notes with self-authenticating features that use “micro screen angle modulation” or µSAM technique, including the Australian $5 banknote issued in 2001 and the New Zealand $10 banknote issued in 2000.
· Information in the book “Optical Document Security” by Rudolf L van Renesse, 3rd Edition published in 2005, including the sections filed as document D17 (Exhibit BAH-6).
· Screen decoded images that contain embedded information that is invisible or illegible until visualized by moiré-type phenomena.
· Transitory images, latent images and transient images based on the application of relief patterns to document substrates, possibly by intaglio print processes or blind embossing.
· Screen decoded images such as carrier screen images, scan and screen traps, local screen modulation (static moiré images), non-local screen modulation (dynamic moiré images), scrambled images and screen decoded images.
· A variety of carrier screen images with hidden information modulated on a printable carrier screen such a line or dot screen. ·
· Different types of scan traps and screen traps which use different types of modulation such as screen angle modulation (SAM), dot frequency modulation, line frequency modulation and dot shape modulation.
· Local screen modulation and static moiré images including line angle modulation in intaglio relief images, μSAM, dot phase modulation and line phase modulation.
· Use of Fresnel lenses to decode images
· Document D8: EP 0256176 (Exhibit BAH-8)
· Document D21: US 6249588 (Exhibit BAH-11)
· Document D19: “Optical Interference Coatings for inhibiting of counterfeiting” by J.A. Dobrowolski et al, published in Optica Acta, 1973, vol 20, No 12, 925-937 (Exhibit BAH-9)
· Document D20: EP 0290875 (Exhibit BAH-10)
· Document D9: “Hidden and Scrambled Images – a review” by Rudolf L. van Renesse, published January 2002 (Exhibit BAH-13)
· Durable polymer substrates and synthetic papers for production of secure documents.
The applicant did not contest Mr Hardwick’s evidence in relation to common general knowledge, but expressed some doubts as to whether the 3rd edition of Van Renesse would have become common general knowledge at the priority date as it was published only around 19 months before the priority date.
Mr Hardwick has stated that he had access to the 3rd edition within a couple of months of publication and I am therefore satisfied that practitioners in this field would have acquired and consulted this third edition of this book soon after publication as the previous editions had already established this book as a standard reference in this art. Based on Mr Hardwick’s undoubted expertise in the field of the invention, I am prepared to accept that all of the information mentioned above was common general knowledge in Australia before the priority date of the application.
Problem to be solved
Although the specification identifies a number of problems with prior art security features such as lack of a true scrambled image, use of analogue techniques, durability of the substrate and need for external decoders, it is clear from the common general knowledge that I have mentioned above, that the solutions to the stated problems were already known and were part of the common general knowledge at the priority date.
D3: US 2006/0177057 and D6: US 2006/0119097 when combined
The opponent submitted that the invention defined in claims 1-14 does not involve an inventive step over the combined disclosure of D3 and D6 for the following reasons:
· D3 discloses a security document and a method of producing such a document comprising digitally encoding a source image to produce a rasterized encoded image having a raster frequency corresponding to the frequency of the decoding lens, applying the encoded image to the image receiving surface of the substrate and providing a separate lenticular lens to overlie the image receiving surface to decode the encoded image. D3 also disclose the encoded image formed can be formed as embossed images and can include holograms.
· D6 discloses a self-authenticating security document which has an integral lenticular lens that can be made to overlie a printed encoded image in order to decode the image.
· Both documents are in the field of security documents having encoded images that can be decoded by a lenticular lens and they are therefore documents that a person skilled in the art would have ascertained, understood and regarded as relevant.
· Motivation to combine D3 and D6 can be found in paragraph [007] of the application where it states “to apply this technology to a durable substrate, such as synthetic paper, and to incorporate an appropriate verification lens integral within the document’s structure” and that this same object is also to be found in paragraph [007] of D6.
· Blind embossing or etching of encoded images, both of which comprise surface geometry reformation without application of visible print media, is common general knowledge in the art.
· Starting from D3 it would have been obvious to incorporate the self-authenticating feature taught in D6 to arrive at the claimed invention.
· Alternatively starting from D6 it would have been obvious to incorporate the embossed encoded image taught in D3 to arrive at the claimed invention.
The applicant argued that neither of these documents when considered separately or in combination discloses the inventive concept of using a decoding lens to decode by frequency modulation an encoded image applied by surface geometry reformation without the use of printing inks. Although D3 mentions encoded images formed as embossed holograms that can be viewed through a lens, the lens is used merely for visualising the hidden image by simulation of oblique angle viewing. Decoding by frequency modulation as required by the claims is a different technique where the encoded image has the same frequency as the decoding lens and this technique is not taught in D3.
The title of D3 reads “Object authentication using embossed hidden images”. In paragraphs [0085] – [0087] it discloses the process of rasterising the source image according to the frequency of the lenticular decoding lens and digitally encoding it with the latent image so that a new visible image is created with the encoded latent image being visible when viewed through a decoder lens. It then goes on to describe various rastering techniques to encode the latent image into the visible image such as emboss line rastering, embossed round raster and cross embossed rastering (paragraph [0115]) all of which require a decoder lens with a corresponding frequency to decode the latent image. In paragraph [0130] it discloses an embodiment in which the security image is formed entirely as an embossed hologram where the embossing is done using a metal stamping die and in paragraph [0133] it describes an embodiment in which the security image is formed by etching using a computer driven mechanical etching machine. At the end of the description in penultimate paragraph [0135] it again mentions the feature of sizing the security image to a decoder having a particular frequency.
In my view the embodiments of embossing and etching disclosed in paragraphs [0130] – [0133] clearly fall within the scope of applying the encoded image by surface geometry reformation independent of the application of visible print media indicia. While it states in paragraph [0130] that the embossed holographic pattern can be coated or laminated with a reflective or mirror like backing to produce a reflective embossed hologram, this does not involve the application of visible print media indicia and even if it did, it is clearly independent of the act of reforming the surface geometry. I am also not persuaded by the applicant’s arguments that the decoder lens decodes the embossed hologram solely by simulating oblique angle viewing. All of the disclosure in D3 including the paragraphs that I have mentioned above, clearly indicates that the lens and the security image in the various embodiments have corresponding frequencies. In my view any simulation of oblique angle viewing if that is indeed the case is still produced with a lens of a matching frequency as required by claim 1.
Therefore D3 discloses all of the features of independent claims 1 and 8 except for the lens being provided on the substrate of the article.
D6 clearly teaches a security article having a printed encoded image and a lenticular lens that is integrally formed with the article to make the article self-authenticating. This disclosure of D6 is not disputed by the applicant.
The applicant has not raised any issues concerning whether these documents could have been reasonably expected to have been ascertained, understood and regarded as relevant by the person skilled in the art and as these two documents are clearly closely related technology-wise to the present invention, I am satisfied that they would so have been.
Would it have been obvious to a person skilled in the art to combine the teaching of D3 and D6 and by doing so would they have arrived at the claimed invention?
If D3 were to be used as the starting point for the invention, the problem to be solved can be stated as how to make the security article of D3 self-authenticating? Faced with this problem, would it have been a matter of routine for a person skilled in the art to incorporate in the security article of D3 an integral decoding lens as taught by D6?
In my view the question has to be answered in the affirmative. The only submissions from the applicant in relation to why these documents cannot be combined were that D3 relates to embossed holograms and D6 is limited to ink based processes, but I do not find this persuasive. D6 is self-authenticating by having the lenticular lens built into the security article and therefore provides a solution to the problem of making the article self-authenticating. There is therefore clearly a motivation to try and combine the teachings of this document with that of D3. I also note that it has been established that self-authenticating bank notes with an integral lens were common general knowledge at the priority date. I am therefore satisfied that in the light of this common general knowledge it would have been a matter of routine to incorporate an integral lenticular lens as taught by D6 in the security article of D3 to make it self-authenticating. Claims 1 and 8 therefore lack an inventive step over D3 in light of D6 and the common general knowledge.
If D6 were to be used as the starting point for the invention, the problem to be solved can be stated as finding alternate techniques to apply the encoded image. Faced with this problem, would it have been a matter of routine to a person skilled in the art to replace the printed encoded images of D6 with embossed encoded hidden images as taught in D3?
Again in my view the question has to be answered in the affirmative. D3 discloses an embossed encoded image decoded through a lenticular lens to achieve the same result as with a printed encoded image and therefore teaches an alternate means of applying the encoded image. There is therefore clearly a motivation to try and combine the teachings of this document with that of D6. It has been established that security documents with latent images produced by blind embossing were common general knowledge at the priority date. I am therefore satisfied that in the light of this common general knowledge it would have been a matter of routine to the person skilled in the art to try an embossed encoded image as taught by D3 in the self-authenticating document of D6 in the expectation that it may well produce an alternate means of applying an encoded image that can be decoded with an integral lenticular lens. Claims 1 and 8 therefore lack an inventive step over D6 in light of D3.
In relation to independent claims 13 and 14, I note that these are omnibus versions of claims 1 and 8 respectively and so their scope is limited to those essential features of these claims as they are described with reference to the figures. As pointed out by the opponent, figures 1-7 of the present application are the same as figures 12-18 of D6. It therefore follows that the invention defined in claims 13 and 14 also lack an inventive step over the combination of D3 and D6.
In relation to dependent claims 2 and 11, the feature of a first page comprising the encoded image and a second page comprising the decoder lens is disclosed in D6.
In relation to dependent claims 3 and 12, the feature of forming the substrate from a plastic paper substitute is disclosed in both D3 and D6.
In relation to dependent claim 4, the applicant agreed that this claim contradicts claim 1and would be prepared to delete this claim. In any event applying a print medium to the image receiving surface is disclosed in D6.
In relation to dependent claim 5, the feature of reforming by embossing and etching which involves material removal is disclosed in D3.
In relation to dependent claim 6, the feature of using a lenticular lens for decoding is disclosed in both D3 and D6.
In relation to dependent claim 7, the features of digitally encoding a source image by rasterisation is disclosed in both D3 and D6.
In relation to dependent claims 9 and 10, the features added by these claims are disclosed by the etching and embossing techniques taught in D3.
Therefore the invention defined in each of the dependent claims also lacks an inventive step over the combination of D3 and D6.
D6: US 2006/0119097 in light of common general knowledge
The opponent additionally argued that the evidence shows that it was common general knowledge in the art to form latent images by blind embossing and that it would have been obvious to combine this common general knowledge with D6 which clearly discloses a self-authenticating article with an integral lens to decode a printed encoded image by frequency modulation.
While the applicant accepted that producing latent images by blind embossing without the application of ink was common general knowledge in the art, they argued that the evidence specifically fails to show that such latent images were used in a manner that required lens decoding based on frequency modulation as opposed to oblique viewing.
I do not find the applicant’s argument persuasive. I have earlier found that D17 does disclose encoded images formed as blind embossed relief patterns that can be decoded by a lens of matching frequency and it is the uncontested evidence of Mr Hardwick that the information in D17 was common general knowledge in the art.
In my view a person skilled in the art would directly be led as a matter of course to try and replace the printed encoded images taught in D6 with the common general knowledge of blind embossed encoded images in the expectation that it might well provide an alternate means to apply the encoded image in a self-authenticating document. Claims 1 and 8 therefore lack an inventive step.
D17: “Optical Document Security” by Rudolf L. van Renesse
From my discussions earlier under Novelty, it is clear that the only difference between the claimed invention and D17 is that D17 does not disclose the combination of an integral decoding lens and encoded indicia applied by surface reformation techniques. However it is clear from D17 and from the evidence of Mr Hardwick that self-authenticating documents with an integral lens to decode printed encoded images were common general knowledge in the art at the priority date.
In my view the person skilled in the art trying to solve the problem of making the article self-authenticating would directly be led as a matter of routine to try and include an integral lens to decode transitory images formed by embossed relief patterns in the expectation that it might well produce a means of making the security article self-authenticating. There is nothing in D17 that would teach away from such a combination or suggest that such a combination would not work.
The invention defined in claims 1 and 8 therefore lacks an inventive step over the teachings of D17.
Mr Hardwick in his declaration has identified passages in D17 where the features added by dependent claims 3-6, 9, 10 and 12 are disclosed and this has not been disputed by the applicant. I agree that these features are disclosed in D17 and that it would have been a matter of routine to include these features. These dependent claims also therefore lack an inventive step.
D1: US 2005/0057036 in light of common general knowledge
The opponent argued that the disclosure of D1when combined with the common general knowledge of digitally encoding a source image to produce a rasterized encoded image would lead to the invention of claim 1 which as a result would lack an inventive step. They relied on the disclosure of perforations in paragraphs [0062] to [0063] as falling within the scope of reforming the surface geometry of the image receiving surface to include a plurality of alternating topographical features that collectively correspond to the encoded image as required in claim 1.
Applying the encoded image by perforating the image receiving surface would involve removing material to make a number of holes in the image receiving surface to thereby create a pattern corresponding to the encoded image. Whilst I accept that making holes in the surface of the security feature zone can be considered as creating variations in surface geometry of the surface as required in claim 8, I am not convinced that the creation of a plurality of tiny holes on the substrate can be considered as reforming the surface geometry of a surface to include a plurality of alternating topographical features as required in claim 1. In my view reforming the surface geometry requires that the surface contour should be reshaped in some manner to include two or more topographical features. However there is nothing to clearly suggest, either in the body of the specification or in the drawings of D1, that such a reshaping happens while making the perforations. Although etching, which involves removal of portions of the surface to create depressed areas on the surface, is clearly contemplated in the opposed specification as a means of reforming the surface contour, I am not reasonably satisfied that the complete removal of parts of the surface to create through holes can be considered as reforming or reshaping the surface. Also the reference to perforation in D1 lacks any detail and is sketchy at best. Consequently I am not satisfied that claim 1 lacks an inventive step over D1 in light of common general knowledge.
In relation to claim 8, although I accept that perforations can be considered as variations in surface geometry, the perforated indicia in D1 are decoded with a lens having corresponding perforations whereas claim 8 requires that the decoding is done with a lenticular lens. A lenticular lens has a cylindrical or convex surface and there is nothing to suggest that such a lens could be used to decode a perforated encoded image.
Claim 8 is therefore inventive over D1 in light of common general knowledge.
MANNER OF MANUFACTURE
The opponent submitted that the subject matter of claims 1 and 8 is not patentable subject matter as they merely list features that were part of the common general knowledge at the priority date and that a mere collocation of known integers does not constitute a manner of manufacture. They also argued that providing surface geometry variation for the encoded image does not provide a new working interrelationship or a surprising or unexpected result.
Section 18(1)(a) of the current Act imports the newness threshold requirement of manner of manufacture from the previous act; see NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd [1995] HCA 15; (1995) 32 IPR 449.
While most of the individual features of these claims may be part of the common general knowledge in the art, I have already found that the claimed combination of an encoded image formed by surface geometry reformation without the use of printing inks and decoding it with an integral lens where the lens and the image have corresponding frequencies is not well known. Consequently I am not satisfied that, on the face of the specification alone, the invention fails to meet the newness threshold requirement. Accordingly, I find that the claimed invention is directed to a manner of new manufacture.
UTILITY
The opponent submitted that the invention defined in claim 8 lacks utility as the scope of the claim would include providing surface geometry variations on the image receiving surface that does not have any background printing and in such a situation the surface geometry variations would lack the necessary contrast for the invention to work.
I note that Mr Hardwick states in paragraph 100 of his declaration that he sees a possible disadvantage of using an independently embossed image where there is no other printing, in that there may not be sufficient contrast to work very well and that the effect would in all probability be weaker.
While that may be true, the scope of claim 8 is not limited to such a construction only. It clearly includes a construction where the surface outside of the encoded image has a background image printed on it and this would provide the necessary contrast if that was indeed an issue. Even in the instance where there is no background printing, I note that Mr Hardwick does not categorically state the invention would not work, but merely that the effect would be weaker.
The opponent has not clearly demonstrated that the invention defined in claim 8 would not work or produce the result claimed in the specification. I therefore find that the invention as defined in claim 8 does not lack utility.
CONCLUSION
Claims 4 and 8 lack clarity and claims 1-14 lack an inventive step over various prior art.
Although I have found all of the claims lack an inventive step, it is possible that there may be subject matter that could be introduced into the claims to overcome the above findings. I therefore allow the applicant 60 days from the date of this decision in which to propose suitable amendments.
COSTS
Costs normally follow the event. The opponent has been successful in their opposition and I therefore award costs according to Schedule 8 against the applicant Graphic Security Systems Corporation.
Ranganath Subbarayan
Delegate of the Commissioner of Patents
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