Innovia Security Pty Ltd v Leonhard Kurz GmbH & Co. KG - [2013] APO 56

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Innovia Security Pty Ltd v Leonhard Kurz GmbH & Co. KG [2013] APO 56

Patent Application: 2005233672

Title:Film comprising a polymer layer

Patent Applicant:                   Leonhard Kurz GmbH & Co. KG
Opponent:  Innovia Security Pty Ltd
Delegate:  Xavier Gisz
Decision Date:  9 October 2013
Hearing Date:  27 June 2013
Catchwords:  PATENTS - opposition to the grant of the patent under s 59 – opposed on the basis of novelty, inventive step, clarity, fair basis and manner of manufacture – claims 1-4, 14 and 17 lack novelty – claims 1-4, 11-14 and 17 lack an inventive step

Representation: Patent applicant: Fisher Adams Kelly, Brisbane
Opponent:Watermark, Melbourne

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2005233672

Title:Film comprising a polymer layer

Patent Applicant: Leonhard Kurz GmbH & Co. KG
Date of Decision: 9 October 2013
DECISION
Claims 1-4, 14 and 17 lack novelty in light of D1 (WO 98/52077). Claims 1-4, 11-14 and 17 lack an inventive step in light of D1.
I allow the applicant 60 days from the date of this decision in which to propose suitable amendments to overcome the above findings.
No award of costs.
REASONS FOR DECISION
Background

Application 2005233672 in the name of Leonhard Kurz GmbH & Co. KG (the Applicant) is the national phase entry in Australia of PCT application WO 2005/101101 which was filed on 13 April 2005 with a priority date of 17 April 2004. An opposition to the grant of the patent was filed by Innovia Security Pty Ltd (the Opponent) (formerly named Securency International Pty Ltd) on 24 March 2010 and a Statement of Grounds and Particulars was served on 24 June 2010. The Statement of Grounds and Particulars was amended on 18 July 2011.
Evidence in Support was completed on 18 July 2011 comprising a Statutory declaration of Dr Franco Moia dated 4 July 2011 and Exhibits FM-1 to FM-13.
Evidence in Answer was completed on 14 November 2012 comprising the following declarations:
- Statutory declaration of Dr Haymo Katschorek dated 24 April 2012
- Statutory declaration of Karel Schell dated 3 September 2012 and Exhibits KS-1 to KS-6
- Statutory declaration of Karel Schell dated 6 November 2012
The hearing was held in Canberra on 27 June 2013. The Applicant was represented by Dr Mark Horsburgh and Dr Jon Wright of Fisher Adams Kelly. The Opponent was represented by Roger Green and Dr Shu-Yen Lee of Watermark.
At the hearing I suggested that both parties provide further submissions on particular aspects of the hearing and accordingly sent a direction for further submissions on 28 June 2013. The Opponent provided their further submissions on 17 July 2013 and the Applicant provided their further submissions on 7 August 2013.
I considered the further submissions filed by both parties about the prior art to be incomplete and partially incorrect. On 10 September 2013 I sent a letter to both parties with my own explanation of the prior art. The parties were given two weeks to comment on that explanation, and both parties provided comments on 24 September 2013.
Specification
The application relates to an optical security element which combines two different latent images that can be selectively read out with inexpensive analyser tools.
The specification ends with 19 claims comprising one independent claim and 18 dependent claims. The claims are reproduced below (with reference numerals removed for readability):
1.   A film, which has one or more anisotropic polymer layer of an at least partially oriented liquid crystal material, characterised in that the one or more anisotropic polymer layers of an at least partially oriented liquid crystal material has one or more first regions which form a first security feature and in which the anisotropic polymer layer has properties which linearly polarise or rotate the direction of polarisation, and has one or more second regions which form a second security feature and in which the anisotropic polymer layer has circularly polarising properties, wherein the first security feature can be visualised when viewing through a first polariser and the second security feature can be visualised when viewing through a second polariser.
2.   A film according to claim 1 characterised in that one of the at least one anisotropic polymer layers has both first regions with properties which linearly polarise or rotate the direction of polarisation and also second regions with circularly polarising properties.
3.   A film according to claim 1 or claim 2 characterised in that the film has at least one replication to which the anisotropic polymer layer of a liquid crystal material is applied and that a diffractive structure for orientation of the anisotropic polymer layer of a liquid crystal material is introduced into the surface of the replication layer, which is towards the anisotropic polymer layer of a liquid crystal material.
4.   A film according to claim 3 characterised in that one or more structural parameters of the diffractive structure differ in first regions and second regions which are respectively associated with corresponding first regions with properties which linearly polarise or rotate the direction of polarisation and second regions with circularly polarising properties of the adjoining anisotropic polymer layer.
5.   A film according to claim 4 characterised in that the mean structural depth of the diffractive structure is different in the first region and the second regions.
6.   A film according to any one of claims 3 to 5 characterised in that the diffractive structure is formed from a superimposition of a first structure for orientation of the liquid crystal material and a second structure for adjusting the linearly polarising properties, the polarisation direction-rotating properties or the circularly polarising properties of the anisotropic polymer layer adjoining the replication layer.
7.   A film according to claim 6 characterised in that the first structure is a line grating with a spatial frequency of 1500 lines/mm to 3500 lines/mm and of a depth of 50 nm to 500 nm, and the line grating has region-wise a different azimuth orientation.
8.   A film according to claim 6 or claim 7 characterised in that the second structure comprises a structure whose mean structural depth differs in first and second regions.
9.   A film according to any one of claims 6 to 8 characterised in that the second structure comprises a matt structure of a structural depth of 200 nm to 800 nm, which is provided either in the first regions or in the second regions.
10. A film according to claim 9 characterised in that the matt structure is an isotropic matt structure with a lateral correlation length of 1 to 10 μm.
11. A film according to claim 1 characterised in that the film has two or more anisotropic polymer layers of an at least partially oriented liquid crystal material, wherein one of the anisotropic polymer layers has regions with properties which linearly polarise or which rotate the direction of polarisation and a second one of the anisotropic polymer layer has regions with circularly polarising properties.
12. A film according to any one of the preceding claims characterised in that the film has a further anisotropic polymer layer which has at least partial circularly polarising properties, wherein regions of the further anisotropic polymer layer with circularly polarising properties are arranged over or beneath the first and second regions of the at least one anisotropic polymer layer.
13. A film according to any one of the preceding claims characterised in that the at least one anisotropic polymer layer has a plurality of image regions which are of an extent of less than 40 μm, wherein arranged in each of the image regions is at least one of the first regions with properties which linearly polarise or which rotate the direction of polarisation and at least one of the second regions with circularly polarising properties.
14. A film according to any one of the preceding claims characterised in that the first security feature includes an object with which are associated first regions with varying azimuth orientation for generating a grey scale image.
15. A film according to any one of the preceding claims characterised in that the first security feature includes two or more objects with which are associated first regions with differently linearly polarising or polarisation direction-rotating properties, the second security feature includes two or more objects with which are associated second regions with differently circularly polarising properties, and there are arranged first or second regions for encoding a third security feature or a fourth security feature respectively, which is visible when viewing through an associated respective third or fourth polariser provided with an associated decoding polarisation pattern.
16. A film according to any one of the preceding claims characterised in that there are arranged first and second regions for encoding a fifth security feature which is visible when viewing through a fifth polariser which is provided with an associated decoding polarisation pattern and which has regions for the detection of linearly polarised light and regions for the detection of circularly polarised light.
17. A film according to any one of the preceding claims characterised in that the film has a further layer with a further optically effectively diffractive structure which provides a further optically recognisable security feature, and the further optically effective diffractive structure at least regions wise overlies the first and the second regions.
18. A film according to any one of the preceding claims characterised in that the film has a thin-film layer system for producing colour shifts by means of interference, which affords a further optically recognisable security feature, and the thin-film layer system at least region-wise overlies the first and second regions.
19. A film according to any one of the preceding claims characterised in that the film has a reflecting layer.
The invention
The invention is a film which contains both regions of linear polarisation and regions of circular polarisation. The regions of linear polarisation form a first latent image and the regions of circular polarisation form a second latent image. The first latent image being visible if the device is viewed through a linear polariser and the second latent image being visible if the device is viewed through a circular polariser. The polarising regions are all formed with liquid crystal polymer. In the preferred embodiment the liquid crystal is formed into its mode of polarisation by applying the liquid crystal onto a diffraction grating.
Explanation of the prior art and the opposed specification
Before proceeding to determine whether the application meets the requirements of the Act, it is necessary to first explain how the invention disclosed in the cited prior art functions. The explanation provided below is essentially the same explanation provided to both parties in the letter of 10 September 2013. Both parties were in substantial agreement with the explanation. The explanation has been simplified in one aspect and expanded in another aspect in response to comments from the parties.
It is noted that the explanation (including the illustrations) I have provided are derived completely from the disclosure of D1 as would be understood by a person skilled in the art. In other words, any information provided in the following explanation that is not available in the specification, submissions or evidence would have been considered common general knowledge to a person skilled in the art at the priority date of the present application.
The Opponent argued the claimed invention was anticipated (i.e. lacked novelty) in light of a single document – WO 98/52077 (ROLIC AG) published 19 November 1998. This document is exhibit FM-2 in the evidence in support. Throughout the decision this document will simply be referred to as D1.
Explanation of D1
The Opponent has argued that the embodiment of D1 at page 14 line 29 to page 15 line 15 discloses the claimed invention. That excerpt from D1 is reproduced below:
“The fact that retarder regions whose optical axes are mutually perpendicular cannot be distinguished using linear polarizers, opens up the possibility of writing different information contents in an LCP layer, it being possible for these to be read independently of one another using different aids. To do this, for example, first information, as described in the illustrative embodiment in Figure 10, can be encoded using regions with mutually perpendicular optical axes. Second information is then encoded using regions whose optical axes make an angle of 45° with the mutually perpendicular axes in the said first regions. If, as described in the illustrative embodiment in Figure 10, a linear polarizer is placed under the retarder layer and the layer is illuminated through it, then only the second information is seen when using a second linear polarizer which is held over the element formed by the linear polarizer, PPN layer and LCP layer. In contrast, the first information is seen with a normal observation angle, only if (as already explained) a circular polarizer instead of the linear polarizer is held over the retarder layer, and in this case the second information can also be seen with a reduced intensity. In an authentication element, it would thus, for example, be possible to have a polarization layer permanently integrated under the structured retarder layer, so that in order to verify the authenticity of the element, it is sufficient to hold the linear polarizer and circular polarizer successively over the said element in order to see the different information contents.”
The figures referred to in this passage (Figures 10a and 10b) are reproduced below:
In the hearing the Opponent noted that the figure provided in D1 did not illustrate all the detail in the accompanying text and they used a whiteboard to provide a more complete illustration of the embodiment in D1. The Opponent provided this same illustration in their further submissions of 17 July 2013.
In the letter of 10 September 2013 I noted that the Opponent’s illustration contained two errors and I provided what I believed to be a corrected version. The Opponent and Applicant both agreed that the Opponent’s illustration had indeed contained two errors and my version was indeed correct.
It is unnecessary to reproduce the Opponent’s erroneous illustration (in the interest of clarity and succinctness) and it suffices to only present the corrected version which I have called Figure A (corrected):
In this corrected diagram it can be seen that the linearly polarised light that passes through regions of the LCP layer that have the optical axes aligned or perpendicular to the incoming polarised light remains unchanged in polarisation. Linearly polarised light that is at a 45° angle to the optical axes of the LCP layer results in left and right circularly polarised light.
As a consequence there are only three types of polarised light that exit the device disclosed in D1: right circular (RC), left circular (LC) and (unchanged) linear polarised (LP) light.
The explanation provided by the Opponent about how the latent images are decoded is incomplete. In the paragraphs and illustrations below I have provided a more complete explanation of how the decoding of latent images in D1 is performed. This explanation was provided to the parties in the letter of 10 September 2013 and both parties indicated in their letters of 24 September 2013 that they were substantially in agreement that it correctly explained the decoding of latent images in the invention disclosed in D1.
Linear polarisers
A linear polariser is an optical filter that passes light of one direction of polarization and blocks light with other directions of polarizations. Throughout this decision a linear polariser is represented by the following diagram:
Circular polarisers
A simple circular polariser is composed of a linear polariser and a quarter wave plate. A circular polariser can be used in two modes: 1) generate circularly polarised light of one chirality, and 2) selectively pass circularly polarised light of one chirality. A circular polariser is used in different directions depending on the mode of operation. These two modes of operation of circular polariser are illustrated below. In all diagrams below I have used the convention that light travels in from the left and out to right to the viewer.
For the purposes of this decision, it is assumed that the circular polariser used to decode the latent images is a circular polariser used in the selective pass mode.
Circularly polarised light that rotates in a counter-clockwise direction is said to be right-circularly polarised. Circularly polarised light that rotates in a clockwise direction is said to be left-circularly polarised. The following symbols are used to represent the polarisation and intensity of light:
It is noted that the polarisation of the light is irrelevant when viewed by the person. This is because the human eye cannot distinguish between polarisations, and it is only the intensity of the light that contributes to its visibility.
As explained above, the device in D1 has three different light outputs: right circular (RC), left circular (LC) and linear polarised (LP) light. There are the two different viewing (ie. decoding) polarisers: linear and circular.
There are four pairings of light with decoding filters: linearly polarised light through a linear polariser, circularly polarised light through a circular polariser, linearly polarised light through a circular polariser, and circular polarised light through a linear polariser. My understanding of these four pairings is as follows:
Linearly polarised light through a linear polariser
If linearly polarised light is aligned with a linear polariser, then the light will travel through unaffected. If linearly polarised light is perpendicular with a linear polariser, then no light will travel through.
Circularly polarised light through a circular polariser
Right circular polarised light will travel through a right circular polariser (selective pass mode) unaffected, and similarly left circular polarised light will travel through a left circular polariser (selective pass mode) unaffected. Right circular polarised light will not pass through a left circular polariser (selective pass mode), and similarly left circularly polarised light will not pass through a right circular polariser (selective pass mode).
Circularly polarised light through a linear polariser
Circularly polarised light will be attenuated as it passes through a linear polariser and will result in light of ‘reduced intensity’. This is because circularly polarised light is made of components of horizontally and vertically linearly polarised light. Thus the component of the circularly polarised light that is aligned with the linear polariser will pass through, while the component of the circularly polarised light that is perpendicular will be blocked.
Linearly polarised light through a circular polariser
Linearly polarised light will be attenuated as it passes through a circular polariser (selective pass mode) and will result in light of ‘reduced intensity’. This is because linearly polarised light, as it passes through the quarter wave retarder, will result in light with components of horizontal and vertical polarised light. Thus the component of light that is aligned with the linear polariser will pass through, while the component of light that is perpendicular will be blocked.
Viewing the latent images
It is noted that in the letter of 10 September 2013, I provided an explanation of using the two polarising decoders in two orientations; four scenarios in total. This caused the Applicant some confusion, so to simplify the explanation (without losing any critical information) each decoding polariser is only illustrated in a single orientation; two scenarios in total.
Linear polariser

In this illustration the device is viewed through a linear polariser wherein the linear polarisation of light is perpendicular to the linear polariser. The horizontal linearly polarised light does not pass through the vertical linearly polarising filter and thus appears opaque/dark. The left and right circularly polarised light is attenuated, and passes through the linear polariser with reduced intensity.
Circular polariser
In this illustration the device is viewed through a circular polariser where the linear polarisation of light is perpendicular with linear polariser portion of the circular polariser. The horizontal linearly polarised light passes through the filter with reduced intensity. The right circular polariser passes through the filter unaffected thus appearing bright/transparent. The left circularly polarised light is obscured thus appearing dark/opaque.
Illustrative Example
In their letter of 24 September 2013 the Applicant’s comments show some misunderstanding of how the polarisation regions of D1 would be arranged in practice. To overcome this misunderstanding I have provided an example of how the regions (in a 7-by-7 array of regions) of the three different polarisations would be combined to form the two latent images, as illustrated below:
Viewing this array of polarising regions through a vertical linearly polarising filter (see paragraph 33 above), a dark “X” shape would be seen against a reduced intensity background as illustrated below:
Viewing this array of polarising regions through a right circular polariser (see paragraph 34 above) a dark diamond ◊ shape would be seen against a background of both bright/transparent regions and a reduced intensity (i.e. ‘ghosted’) “X” shape as illustrated below:
OPPOSITION UNDER SECTION 59
Onus of proof
The onus of proof in opposition proceedings 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; (2001) 50 IPR 305 at 311 [29], 319 [67]; Commissioner of Patents v Sherman [2008] FCAFC 182 at [18], [22]; [2008] FCAFC 182; (2009) 79 IPR 426 at 430 [18], 432 [22]).
Grounds of Opposition
The patent was opposed on the grounds that the patent application lacks of novelty, inventive step, a manner of manufacture, fair basis, clarity, defining the invention, and utility. Submissions were made for all these grounds except for the ground of utility.
Novelty [s 18(1)(b)(i)]
A claimed invention is deprived of novelty if it has been given to the public before the priority date, either by prior use of a product or process, or by publication of information that equates to the claimed invention (Justice Bennett in Danisco A/S v Novozymes A/S (No 2) [2011] FCA 282 at [248]; [2011] FCA 282; (2011) 91 IPR 209 at [248]). It is well established that the general test for anticipation is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20]; [1977] HCA 19; (1977) 137 CLR 228 at 235:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement.”
This test is satisfied if the alleged anticipation discloses all of the essential features of the invention as claimed (Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40 at [19]; [1990] FCA 40; (1990) 16 IPR 545 at 549). To meet this requirement, the prior art must contain “clear and unmistakable directions” to the claimed invention (Pfizer Overseas Pharmaceuticals v Eli Lilly and Co [2005] FCAFC 224 at [314]; [2005] FCAFC 224; (2006) 68 IPR 1 at 67 [314]). However, if the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee’s claim, but would be at least as likely to be carried out in such a way that would not do so, the patentee’s claim will not be anticipated (General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd (1971) 1A IPR 121 at 138). Where a prior publication does not explicitly disclose all of the integers of the claimed invention, it would still deprive the claimed invention of novelty if (i) the skilled reader understands the disclosures of the prior publication to include a missing integer, and (ii) if the document contains a direction to use a process that inevitably or inexorably results in something within the claim (Justice Bennett in Danisco (No 2) [2011] FCA 282 at [248]; [2011] FCA 282; (2011) 91 IPR 209 at [248]).
Features of claim 1
The invention defined in claim 1 can be divided into the following essential integers:
(a) A film, which has one or more anisotropic polymer layers of an at least partially oriented liquid crystal material
(b) characterised in that the one or more anisotropic polymer layers of an at least partially oriented liquid crystal material has one or more first regions which form a first security feature and in which the anisotropic polymer layer has properties which linearly polarise or rotate the direction of polarisation, and
(c) has one or more second regions which form a second security feature and in which the anisotropic polymer layer has circularly polarising properties,
(d) wherein the first security feature can be visualised when viewing through a first polariser and
(e) the second security feature can be visualised when viewing through a second polariser
Expert opinions
Dr Moia states at paragraph 8 of his declaration:
“Annexed as Exhibit FM-2 is International Patent Application No WO 98/52077 in the name of Rolic AG, which I note was published on 19 November 1998 and is listed as D1 in the Statement of Grounds and Particulars. This patent application is directed towards an optical component with an optically anisotropic layer for particular use in the field of protection against forgery and copying. The patent application discloses optical elements suitable for certificates and banknotes (page 7, lines 17 to 19), and therefore must be considered capable of being a film, if it is capable of being applied to a banknote. Furthermore, the patent application discloses anisotropic liquid crystal polymer layers having first and second sets of information encoded in. the first and second regions which have circularly polarising properties and linearly polarising properties or rotate the direction of polarisation such that the first and second information can be read using appropriate polarisers (Page 14, line 12, to Page 15, line 15). I, therefore, consider that all the essential features of claim 1 of the opposed application are disclosed by Exhibit FM‑2.”
I consider this statement to provide an at least prima facie case as to why the claimed invention is not novel in light of D1.
In the evidence in answer, Mr Schell’s evidence focuses on how a diffraction grating can be formed using E-beam technology. For example, at paragraphs 2.2 to 2.4:
“The Application proceeds to describe a hot stamp foil or film comprising a liquid crystal polymer layer. This layer contains image information of two different latent images. The two latent images display differently under incident light of different polarization states. This means that one of the images (one of the latent security features) becomes visible when viewed through a linear polarizer, and the other latent security feature becomes visible through, for example, a circular polarizer.
In my opinion, the inventors achieve this by an intelligent and inventive exploitation of E‑beam technology. As an expert in this field, I consider the invention to exploit this technology well beyond what would have been at and before the priority date, 17 April 2004.
The E-beam technology generates the shim for the two adjoining diffractive structures and the diffractive structures are subsequently embossed in the replication layer. An anisotropic polymer layer is then applied or coated on this replication layer. Aligning of the liquid crystal by heat and cross-linking by UV or heat fixes the orientation of the liquid crystal molecules.”
Mr Schell concludes in his declaration at paragraph 3.5:
“It is therefore my opinion that none of the prior art documents provided to me describes, or even comes close to suggesting the invention of the Application. Referring back to my first declaration dated 03 September 2012, it is also clear that I, as an expert in this field, would not have thought of the solution described in the Application in the normal course of my work or attendant investigations.”
Mr Schell’s evidence is unusual since it focuses on the E-beam technology, however such technology forms no part of the opposed application. His conclusion that the opposed application is novel and inventive appears to be predicated on a misunderstanding of that the scope of the claimed invention includes the E-beam technology. Consequently, Mr Schell’s opinion pertaining to novelty and inventive step is given little weight.
Anisotropic polymer layer
The Applicant argued at the hearing and in their further submissions that D1 does not disclose a single isotropic layer as defined in claim 1. The Applicant states in their further submissions at paragraph 6.10 to 6.13:
“We presently dispute that the combination of the linear polarizer 52, the LPP layer and the LCP layer 51 of Figure 10a of D1 can be regarded as a single anisotropic polymer layer, as is defined in Claim 1 of the Application.
To start with, the linear polarizer 52 is not explicitly, in the referenced passage, described as being made of a liquid crystal polymer (LCP). While, elsewhere in D1 (see page 11, lines 16 to 19), a linear polarizer is described as being possibly made of LCP, but this is not necessarily pertinent to the embodiment described on page 14, line 29 to page 15, line 15 of D1.
Secondly, the photo-oriented polymer network (PPN) (=LPP) layer disposed in between the LCP retarder layer 51 and the linear polarizer 52 is clearly not an anisotropic polymer layer, but is a layer which renders the LCP retarder layer 51 above it anisotropic.
The whole notion of “anisotropic” fails to apply to a layer made up of three different layers from which two of the layers might be oriented differently.”
D1 discloses a composite structure to form the polarising regions. The three components forming the composite are: a linear polariser (52), a photo-oriented polymer network, and a liquid crystal polymer retarder layer (51). I see no reason why the term anisotropic polymer layer should be construed such that it is necessarily homogeneous. Thus I consider that a layer can comprise different components.
The word anisotropic is defined in the Macquarie dictionary as “of different properties in different directions”. I consider that the layer in D1 is anisotropic since it has different (optical) properties in different directions; whether each component of the layer is anisotropic is not relevant.
The anisotropic polymer layer has two sheets of oriented liquid crystal ‘sandwiching’ a centre sheet made of a photo-oriented polymer network. I construe the term “anisotropic polymer layers of an at least partially oriented liquid crystal material” to mean an anisotropic polymer layer containing predominantly or comprising an at least partially oriented liquid crystal material. There is nothing in the specification to indicate the anisotropic layer is exclusively liquid crystal material.
I consider that D1 discloses an anisotropic polymer layer of an at least partially oriented liquid crystal material. Consequently, feature (a) is disclosed in D1.
Regions of polarisation
As explained with reference to Figure A (corrected), D1 discloses a first region that linearly polarises light and a second region that circularly polarises light. Consequently, features (b) and (c) are disclosed in D1.
Security features
As explained with reference to the illustrations, D1 discloses a first security feature viewable with a first polariser (linear polariser), and a second security feature viewable with a second polariser (circular polariser). Consequently, features (d) and (e) are disclosed in D1.
Does D1 provide clear and unmistakeable directions?
The Applicant argues in their further submissions at paragraph 3.3:
“These errors in Figure A are a good indication that one skilled in the art is not able to easily and unambiguously deduce the workings of what is described in D1 as an invention.”
Although the Opponent may have made a mistake in their submissions, this does not necessarily imply the disclosure in D1 is ambiguous or inadequate. Indeed, I can only discern one possible interpretation of D1. I find the disclosure in D1 to provide clear and unmistakable directions of the invention.
In summary, D1 discloses all of the features defined in claim 1 and consequently claim 1 lacks novelty in light of D1.
Dependent claims
Claim 2
D1 discloses both circularly polarising and linearly polarising regions reside in the same layer (for example in figure 10a). Consequently claim 2 is not novel in light of D1.
Claims 3 and 4
The Opponent states in their submissions at paragraph 6.21:
“Claim 3 of the Application refers to the presence of a replication layer having a diffractive structure for orientation of the anisotropic polymer layer. D1 mentions the use of a photo-orientable polymer network (PPN) which is used to align the liquid crystal layer. However, D1 also states that the PPN orientation layer may be replaced by a correspondingly structured substrate, which can be produced by embossing, etching or scratching (page 23, lines 14 to 19). Dr Moia's evidence is that mention of a structured substrate, in the context of aligning liquid crystal layers, necessarily and directly relates to diffractive structures.”
Paragraphs 10 to 12 of Dr Moia’s declaration state:
“Claim 3 of the opposed application refers to the presence of a replication layer having a diffractive structure for orientation of the anisotropic polymer layer. Exhibit FM-2 mentions the use of a photo-orientable polymer network (PPN) which is used to align the liquid crystal layer. However, Exhibit FM-2 also states that the PPN orientation layer may be replaced by a corresponding structured substrate, which can be produced by embossing etching or scratching (page 23, lines 14 to 19). As such, claim 3 does not disclose any new features over Exhibit FM-2.
It is noted that claim 3 refers specifically to a diffractive structure but, in my opinion mention of a structured substrate in the context of aligning liquid crystal layers necessarily and directly relates to diffractive structures.
Claim 4 introduces that it is the presence of the diffractive structure in the first and second regions which provide linear polarising or circularly polarising properties of the polymer layer. In Exhibit FM-2 it is the PPN which·aligns the liquid crystal polymer and, as mentioned above, may be oriented linearly or circularly. However, Exhibit FM-2 specifically mentions that the structured substrate can be used to produce the required orientation, in the same manner as the photo-orientable polymer network (page 23, lines 14 to 19). As such, the features of claim 4 are also known from Exhibit FM-2.”
Although there is no explicit disclosure of a diffraction structure in D1, I am satisfied by the evidence that such a structure is inherently disclosed in D1. I am also satisfied by the evidence that the diffractive structures would be used in place of the PPN to form both the linear and circular polarising regions. Consequently claims 3 and 4 are not novel in light of D1.
Claim 5-10
D1 does not disclose the specific features of the diffractive structure defined in claims 5-10. Consequently claims 5-10 are considered novel.
Claims 11, 12
D1 discloses a multi-layered product, however there is no clear and unmistakable disclosure of a first layer comprising only the linear polarisation regions and the second layer comprising only the circular polarisation regions. Claims 11 and 12 are novel.
Claim 13
D1 provides no explicit disclosure of the size of the polarising regions. Consequently claim 13 is novel.
Claim 14
D1 discloses a variation on the invention at page 19 lines 10 to 20 wherein the azimuthal orientation can be varied for generation of greyscale images. Consequently claims 14 lacks novelty in light of D1.
Claims 15 and 16
D1 does not explicitly disclose a third or fourth security feature.
Claim 17
D1 discloses that the optical element, as disclosed therein, can also be applied over permanently visible authentication elements such as watermarks, holograms or cinegrams (page 3, lines 17 to 21). It is considered implicit that a hologram, in this configuration, would be a diffractive structure. Claim 17 lacks novelty in light of D1.
Claims 18
D1 does not disclose a thin-film layer system for producing colour shifts by means of interference. Claim 18 is novel in light of D1.
Claim 19
D1 discloses a reflector layer (page 11 lines 29 to 31). However, this reflector replaces the linear bottom polarising layer. This significantly changes the invention such that the device no longer has regions that are linearly and circularly polarised without the use of the viewing polariser. Consequently claim 19 is novel in light of D1.
Novelty Conclusion
Claims 1-4, 14 and 17 lack novelty in light of D1.
Inventive step [s 18(1)(b)(ii)]
The relevant portions of Section 7 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 Applicant argued in their submissions at paragraphs 4.3 and 4.4:
“The Opponent has put forward evidence from a single expert. The first question must be: Is Dr Moia a person of ordinary skill in the art? The answer must be "no". Dr Moia admits at paragraph 4 of his declaration to being an inventor "in a large number of patent applications". Dr Moia cannot be considered to be a non-inventive skilled worker in the field. This does not mean that his evidence may not have some value, but it must be given low probative weight in relation to whether or not an advance in the field is obvious.
Dr Moia is closely associated with the Applicant and Inventors for the primary citation (D1) and is named as Inventor or Author on some of his exhibits and on those of the Opponent's witness, Mr Schell. It must be asked whether Dr Moia can give independent evidence. The declaration of Dr Katschorek casts significant doubt on the independence of Dr Moia. In particular, Dr Katschorek gives unchallenged testimony that a cooperation between Dr Moia and Leonhard Kurz GmbH & Co KG ended unfavourably. The evidence strongly suggests that Dr Moia has good reason to exhibit bias in giving his evidence.”
I reject the assertion that Dr Moia is too inventive to provide evidence representative of a person skilled in the art. Dr Moia is clearly a person with significant skill and knowledge in the art; exactly the kind of person who can provide useful information for resolving an opposition. 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.

I also reject the assertion that Dr Moia’s opinion is biased against the Applicant. The default assumption must be that his professional opinion about technical matters is substantially free of bias. A brief statement about his cooperation with the applicant ending ‘unfavourably’ is not sufficient cause to believe otherwise.
I consider both Dr Moia and Mr Schell, with their extensive experience in security documents, are experts who can provide useful insight into the knowledge and expected behaviour of a person skilled in the art.
The problem
The description of the opposed specification (at page 2 lines 22 to 26) describes the object of the invention as follows:
“Now the object of the invention is to provide a simplified and less expensive process for an optical security element which is based on oriented liquid crystal layers and which combines in itself two different items of latent image information which can be selectively read out with commercially available inexpensive analyser tools.”
I accept that this is the problem that the person skilled in the art sought to overcome.
Ascertained, understood and regarded as relevant
The Opponent argues in their submissions at paragraph 8.30:
“Dr Moia puts in evidence that it is standard practice for workers in the field to consult and review patent applications. It is also relevant that Dr Moia visited Australia in February 2004 and, therefore, can be considered to have a good appreciation of what the skilled addressee in Australia would have ascertained, understood and regarded as relevant. As such, patents and patent applications, in general, would have been ascertained, understood and regarded as relevant by the skilled addressee.”
The Applicant did not provide evidence or submissions as to whether a person skilled in the art would review patent applications in the course of their work. Consequently, I concur with the evidence of Dr Moia and consider it reasonable to expect a person skilled in the art would review patent applications.
Document D1 relates to a document security (i.e. anti-counterfeit) device that utilises polarisers, wherein the optical information is made visible by means of an external polariser. Since the document closely matches the problem the invention seeks to overcome, it is reasonable to conclude that a person skilled in the art could have been expected to ascertain this document. D1 is clear and concise and thus would be considered readily understandable by the person skilled in the art. The relevance of D1 would be immediately apparent to a person skilled in the art, especially with reference to page 15 lines 4 to 15.
Obviousness
Claims 1-4, 14 and 17
Claims 1-4, 14 and 17 lack novelty and, given D1 would have been ascertained, understood and regarded as relevant, it follows that these claims would also lack an inventive step.
Claim 5
Dr Moia provides evidence at paragraph 18 of his declaration that suggests diffraction gratings with different mean structural depths in the first and second regions would be well known. Dr Moia refers to prior art document US 5,917,570 (BRYAN-BROWN et al) published 29 June 1999. The most relevant portion of this document states at column 5 lines 4 to 10:
“For lower grooves depth or groove asymmetry, the director deformations over the grooves are predominantly bend deformations as shown in FIG. 5a. If the groove depth or asymmetry is increased then a dramatic change occurs in the configuration and the deformation now includes a large amount of splay (FIG. 5b); the former configuration will always induce a low pretilt while the latter will give a large pretilt.”
It appears from this excerpt that the depth of grooves plays a significant role in the orientation of the liquid crystals. Relatively shallow groove depth appears to result in ‘bend deformation’ which results in a ‘low pretilt’, whereas relatively deep groove depth appears to result in ‘deformations [with] a large amount of splay’ which results in ‘large pretilt’.
Although groove depth appears to play a role in the orientation of the liquid crystals, I am unable to determine the relationship between the groove depth and observable qualities of the liquid crystal such as polarisation orientation or birefringent optical axis. Consequently, I am not convinced that a person skilled in the art would vary the mean structural depth of the diffractive structure to produce the regions of different birefringent optical axes disclosed in D1. Consequently, claim 5 is considered inventive.
Claims 6-10
There was no evidence to suggest that a diffractive structure formed from a superimposition of a first structure and a second structure is known in the art. Consequently, I consider claim 6 (and claims dependent thereon – claims 7-10) to be inventive.
Claims 11 and 12
D1 discloses a multi-layered device. Furthermore, D1 discloses “spatially varying directions of the optical axis relative to the plane of the layer” (page 11 lines 1 and 2). From this I consider it reasonable that a person skilled in the art would, as a matter of routine, make the device such that regions on one layer had optical axis in one direction (thus forming linear polarising regions) while another layer had optical axis in another direction (thus forming circular polarising regions). Consequently claims 11 and 12 lack an inventive step in light of D1.
Claim 13
The Opponent argues in their submissions at paragraph 9.32:
“Claim 13 introduces that the anisotropic polymer layer has a plurality of image regions which are of an extent of less than 40 μm. In patent application WO2002003128, which was published on 10 January 2002, page 16, line 18, describes a frame area of 30 μm and page 21, lines 14-16 depicts 'size of the pixels 1 is typically a few 10 μm, for many applications preferable from 4μm to 400μm, but could be much smaller as well as much larger'. Although WO2002003128 is related to the field of Liquid Crystal Devices, Dr Moia puts in evidence that it is clear to a person working in the field of liquid crystal security device that the pixel areas of this disclosure can also be applied for security device purposes. Furthermore, the paper "Optical LPP/LCP Devices: A new Generation of Optical Security Elements", by Moia et al, states that the resolution of LPP/LCP technology is comparably high as photographic pictures, which would also place the resolution within this range.”
It appears that the technology used in D1 to make the regions can be used to make the polarisation region sizes to be less than 40 μm. Furthermore, there does not appear to be any surprising or unexpected benefit of doing so. I consider that a person skilled in the art would, as a matter of routine, make the polarisation regions less than 40 μm since this would presumably add to difficulty in forging, and thus increasing the security of, the device. Consequently claim 13 lacks an inventive step in light of D1.
Claim 14
Claim 14 lacks novelty and therefore also lacks an inventive step.
Claim 15 and 16
D1 discloses a decoding polarization pattern (page 11 line 25 to page 12 line 3). However, it is not obvious how this could be used to form another security feature in addition to the first and second security features. Consequently claims 15 and 16 are considered inventive in light of D1.
Claim 17
Claim 17 lacks novelty and consequently also lacks an inventive step in light of D1.
Claims 18
D1 does not disclose a thin-film layer system for producing colour shifts by means of interference nor can I see any motivation for a person skilled in the art to add such a feature. Claim 18 is considered inventive in light of D1.
Claim 19
D1 discloses replacing the linear polariser with a reflector (page 11 lines 29 to 31). However I can see no motivation for a person skilled in the art to add a reflector to the device disclosed in D1 rather than replacing the linear polariser with a reflector. This is especially so since a reflector has different effects on circular polarised light compared with linearly polarised light – the chirality of circularly polarised light is inverted when reflected off a reflective surface, whereas the polarisation of linearly polarised light is unchanged when reflected off a reflective surface. Consequently claim 19 is inventive in light of D1.
Inventive step conclusion
Claims 1-4, 11-14 and 17 lack an inventive step.
Manner of manufacture [s 18(1)(a)]
The Particulars with regard to this ground are as follows:
“Each of the features in claim 1 was well known in the art at the priority date, noting items 2.1 (c) and 2.1 (d) above. They form a mere collocation of known integers which do not produce a new result. The invention as claimed in claim 1 is therefore not a manner of manufacture within the meaning of section 6 of the Statute of Monopolies.”
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.
Although the features of claim 1 were known at the priority date, this was in light of a single prior art document; I do not consider the claimed combination of features to be 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.
Claim defining the invention [s 18(1)]
The Opponent argues in their submissions at paragraphs 13.1-13.3:
“The invention defined by the specification is in providing two different types of polarization feature in a single layer of liquid crystal material, and more particularly, by modulating the fine structure of an underlying alignment substrate in order to modulate the polarization characteristics of the liquid crystal material.
However, these structural features which characterize the invention are absent from at least claims 1 to 3. The Applicant's own expert, Ir. Schell, puts in evidence that the inventive concept is related to the first and second diffractive structures.
Accordingly, at least claims 1 to 3 do not define the invention.”
The words “... an invention is a patentable invention ...” in s 18(1) contain a threshold requirement that, on its face, the specification discloses ‘an invention’: Philips v Mirabella (supra); and Advanced Building Systems Pty Ltd v Ramset Fasteners (Australia) Pty Ltd [1998] HCA 19; (1998) 40 IPR 243.
As explained in the paragraphs above, there is clearly an invention disclosed in the opposed specification. The claims broadly define and include within its scope that invention. Consequently, the specification meets the relatively low threshold implicit in s 18(1).
Lack of fair basis [s 40(3)] and full description [s 40(2)(a)]
The accepted test for fair basis is that of a “real and reasonably clear” disclosure. In Rehm Pty Limited v Websters Security Systems (International) Pty Limited (1988) 81 ALR 79 Gummow J states at 95:
“The circumstance that something is a requirement for the best method of performing an invention does not make it necessarily a requirement for all claims; likewise, the circumstance that material is part of the description of the invention does not mean that it must be included as an integer of each claim. Rather, the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification.”
The test for full description is given in the High Court in Kimberly-Clark v Arico [2001] HCA 8; (2001) 207 CLR 1 (paragraph 25):
“... will the disclosure enable the addressee of the specification to produce something within each claim without new inventions or additions or prolonged study of matters presenting initial difficulty?”
Reduced intensity image
One issue raised in the hearing was whether figure 1 of the opposed specification was complete and correct, and specifically whether there would be a ‘ghosting’ (i.e. ‘reduced intensity’) image of the first latent image when viewing the second latent image. This question was raised in the context determining the novelty and inventive step of the opposed application, however this question also relates to fair basis and full description.
The Opponent states in their further submissions at paragraphs 3.14 to 3.17 (their own emphasis in bold):
“The Hearing Officer has requested that the opponent discuss whether the text 'VALID' will appear with reduced intensity when viewing the device with a circular polariser.
Paragraphs 3.7 and 3.8 discussed that the device must necessarily be emitting linearly polarised light to provide the contrasting images of representation 12 and 13.
As discussed in paragraphs 2.23 and 2.28 above, it is a basic law of physics that when viewing any linear polarised light through a circular polariser, as linearly polarised light is made of equal components of left and right circularly polarised light, that only the left OR right circularly polarised light will be transmitted through the polariser. This means that the intensity of the linearly polarised light emitted from the device of the opposed application described in Figures 1 and 2, must be viewable at a reduced intensity.
Therefore, the opponent submits that the text 'VALID' must appear with reduced intensity when viewing the device with a circular polariser.”
The Applicant states in their further submissions at paragraph 4.8 (their own emphasis in bold):
“The Opponent puts forward in their further submissions at paragraph 2.29 that one can see the linearly polarized light by using a circular polarizer. This is incorrect.”
My own analysis of the interaction of linearly polarised light with circular polarisers leads me to believe that (in theory) linearly polarised light can indeed be viewed through a circular polarised at a reduced intensity. Thus I concur with the Opponent on this point.
The conclusion that the linearly polarised light would be visible in practice (rather than merely in theory only) is supported by the disclosure in D1, wherein it is stated at page 15 lines 8 to 10:
“…[T]he first information is seen with a normal observation angle, only if (as already explained) a circular polarizer instead of the linear polarizer is held over the retarder layer, and in this case the second information can also be seen with a reduced intensity”
I conclude that the first latent image (the word VALID) encoded with linearly polarising regions in the opposed specification would appear with reduced intensity superimposed on the second latent image (the image of a woman) encoded by circular polarising regions of a woman when viewing the device with a circular polariser.
Although there is an omission in figure 1 of the opposed application, this omission does not detract from the instructions in making the invention. Instead, this is merely considered an additional effect that does not change the fundamental working of the invention. The invention is considered fully described for the purposes of s 40(2)(a).
Since the claims are not specific to the absence of a ghosting effect, the omission in the description does not affect the fair basis of the claims. However, any potential amendment specific to an absence of ghosting effect is necessarily precluded.
Multi-layered device
The Opponent states in the SG&P at paragraph 4.1:
“It is clear on the face of the specification that the invention lies in providing circularly and linearly polarizing security features in a single layer of a liquid crystal material. That this is the case can be observed from the object of the invention as stated on page 2 (providing a simplified process for producing a security element having two different items of latent image information) and the stated solution on page 3, lines 6-8 - "[i]t is thus possible by means of the invention to provide two or more items of latent image information in superposed relationship in one working step in one security feature" (emphasis added).
However, the claims are not so limited. Claim 1 includes within its scope any combination of linearly and circularly polarizing features, whether those features are provided within a single layer, or within separate layers - see claims 2 and 11, which are directed to these two alternatives.
The essential feature of two different types of polarizing region in a single layer is absent from claims 1 and 11, and any claim (other than claim 2) which is appended to claim 1 or claim 11. Accordingly, at least claims 1 and 11 are not fairly based on the body of the specification as they claim a different invention to that which is described.”
I do not consider that the different types of polarising region residing in a single layer is essential to the invention. Although one may be preferred they are both options disclosed in the specification filed; see figures 7 and 8 of the opposed specification. This aspect of the claims is fairly based.
Diffraction grating for forming polarising regions
The Opponent argues in the SG&P at paragraph 4.1:
“Claim 6 states that the diffractive structure is formed from a super imposition of a first and second structure. The first structure for orientation of the liquid crystal material and the second structure for adjusting the linearly polarising properties, the circularly polarising properties or the polarisation direction rotating properties. The specification of the opposed application provides no disclosure of how the first structure orientates the liquid crystal material and the second structure adjusts either the linearly polarising, circularly polarising or polarisation direction rotating properties. Page 6 lines 1 to 20 disclose using a superposed high frequency grating and isotropic matt structure. Regions in which only the high frequency grating is present exclusively linearly polarise the incident light whereas regions which have the high frequency grating and isotropic matt structure result in circularly polarising incident light. Therefore, claim 6 is not fairly based on the body of the specification.”
In this case, the applicant has provided in their further submissions a candid admission about this aspect of the invention stating at paragraph 7.2 (with my emphasis added in bold):
“Figures 4a, 4b of the Application disclose exemplary embodiments of the preferred diffractive structure. Surprisingly, the inventors discovered that such a diffractive structure could lead to the same anisotropic polymer layer comprising one region being linearly polarizing and another region being circularly polarizing. The underlying physics of this effect has not been explained as yet, but the effect indeed works.”
In determining whether a full description is provided in a patent specification there is no requirement of knowledge of the underlying theory of how an invention works. The requirement for full description is that the preferred embodiment of the invention is described with enough detail such that a person skilled in the art could reproduce the invention. In this case, there appears to be sufficient detail for a person skilled in the art to reproduce the preferred embodiment of the invention. I am satisfied there is a full description of this aspect of the invention.
As to question of fair basis, the claimed effect is a liquid crystal behaving as a circular polariser. The disclosed method of making the liquid crystal behave as a circular polariser is to apply the liquid crystal onto a complex diffraction grating structure. I am satisfied the claims are consistent with the specification as a whole and there is a “real and reasonably clear disclosure” of the invention. This aspect of the claims is fairly based.
Anisotropic layer with linearly polarising regions
The Opponent argues in their submissions at paragraphs 12.9 to 12.13:
“An embodiment of the invention is described in which, instead of a reflection layer 34, a transmissive element is considered. It is mentioned that:
"In accordance with the demonstrated laws a transmissive film of that kind is thus to be irradiated with linearly polarised or circularly polarised light, in which case the security features 21 and 22 are afforded by viewing with a linear or a circular polariser."
The above paragraph states that, without the reflection layer, the film requires to be irradiated with the relevant polarised light to view the first and second security features.
Moreover, the Application goes on to say on page [16 line 30 to page 17 line 3] that:
"In addition, irradiation is also possible only with linearly polarised light, with observation through a linear or a circular polariser. In that case it would also be possible for a linear polariser of that kind to be already integrated into the film 3 so that, in the case of transillumination 17 with unpolarised light, when viewing through a linear polariser, a first security feature becomes visible while when viewing through a circular polariser a second security feature becomes visible."
The above paragraph states that, without the reflection layer and being irradiated with unpolarised light, the film requires an additional integrated linear polariser to view the first and second security features.
It is clear that there is no disclosure of the anisotropic layer linearly polarising light in regions, rather the regions may simply allow linearly polarised light to pass through.”

I have found (in paragraphs 48 to 52) the multiple component layers in D1 constitute a single anisotropic layer. Similarly, the opposed specification discloses a single anisotropic layer formed by multiple component layers, i.e. liquid crystal polymer component and a linear polariser component. Thus the opposed specification is considered to contain a disclosure of an anisotropic layer with linearly polarising regions. Consequently this aspect of the invention is considered both fully described and fairly based.
Clarity
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).
The Opponent argues in their submissions at paragraph 11.2:
“Claim 6 states that the diffractive structure is formed from a super imposition of a first and second structure. The first structure for orientation of the liquid crystal material and the second structure for adjusting the linearly polarising properties, the circularly polarising properties or the polarisation direction rotating properties. This claim is unclear because, if the first structure aligns the liquid crystal material, it is not necessary that the second structure adjusts the linearly polarising properties, as the liquid crystal has already been aligned. Indeed, the specification of the opposed application provides no disclosure of how the first structure orientates the liquid crystal material and the second structure adjusts either the linearly polarising, circularly polarising or polarisation direction rotating properties. In fact, page 6 lines 1 to 20 disclose using a superposed high frequency grating and isotropic matt structure. Regions in which only the high frequency grating is present exclusively linearly polarise the incident light whereas regions which have the high frequency grating and isotropic matt structure result in circularly polarising incident light. Therefore, claim 6 lacks clarity.”
Although the claim may be considered non-specific as to exactly how the polarising properties and polarisation-rotating properties of the liquid crystals are achieved, this is not a matter of clarity. The claims merely need to define the scope of the invention. In this case the scope is clear – a superimposition of first and second structures that align the liquid crystals and adjust their properties. I have already determined above that the explanation is adequate and the invention fully described.
The Opponent argues at paragraph 11.3 of their submissions:
“Claim 15 introduces that the first and second security features (two or more objects) associated respectively with the first and second regions. It is unclear what 'objects' the claims are referring to. The specification does not appear to mention any objects in relation to the first and second security feature. Furthermore, claim 15 goes on to state that there are arranged first or second regions for including a third security feature or a fourth security feature respectively. As first and second regions have already been introduced in claim 1 it is unclear whether the first or second regions mentioned in claim 15 are referring to new first or second regions or whether they are referring to claim 1. Either way, it is not possible to understand what new features are being introduced in claim 15, which therefore lacks clarity.”
I understand that the ‘object’ in claims 14 and 15 is an image formed by the security feature. The claims are considered clear.
Summary
Claims 1-4, 14 and 17 lack novelty in light of D1. Claims 1-4, 11-14 and 17 lack an inventive step in light of D1.
In my opinion these deficiencies can be overcome by amendment. I allow the applicant 60 days from the date of this decision in which to propose suitable amendments to overcome the above findings.
Costs
It is normal in actions before the Commissioner that costs should follow the event. However, this case is somewhat unusual in that the submissions from both parties were considered so inadequate as to necessitate further submissions. Even then, still further communication with the parties was necessary to resolve what I consider reasonably straight-forward technical questions.
Although there were deficiencies in the submissions from both parties, it is the Opponent’s failure to articulate important aspects of the opposition that is given most weight in consideration of costs since the onus is on the Opponent to establish why the patent should not be granted.
The Opponent was successful in opposing the grant of the patent but was unable to provide the crucial information that made their opposition successful. Consequently it is appropriate in the circumstances that I make no award of costs.
Xavier Gisz
Delegate of the Commissioner of Patents