Innovia Security Pty Ltd v OVD Kinegram AG

[2016] APO 60

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Innovia Security Pty Ltd v OVD Kinegram AG [2016] APO 60

Patent Application:                2010294467

Title:Multilayer body

Patent Applicant:                   OVD Kinegram AG

Opponent:  Innovia Security Pty Ltd

Delegate:  Xavier Gisz

Decision Date:  7 September 2016

Hearing Date:  15 June 2016

Catchwords:  PATENTS - opposition to the grant of the patent under s 59 – Claims 1, 4, 5, 6, 8, 9, 12, 14, 15, 24, 25, 29 and 31 lack novelty in light of US 2008/0160226 - Claims 1, 3-6, 8, 9, 12, 14, 15, 24-27, 29 and 31 lack an inventive step in light of US 2008/0160226 – costs awarded against the applicant

Representation:  Patent attorney for the applicant:  Mark Horsburgh of Fisher Adams Kelly Callinans

Patent attorney for the opponent:  Ken Bolton of Watermark and Ian Lindsay of Innovia Security Pty Ltd

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application:                2010294467

Title:Multilayer body

Patent Applicant:                   OVD Kinegram AG

Date of Decision:                   7 September 2016

DECISION

Claims 1, 4, 5, 6, 8, 9, 12, 14, 15, 24, 25, 29 and 31 lack novelty in light of US 2008/0160226. Claims 1, 3-6, 8, 9, 12, 14, 15, 24-27, 29 and 31 lack an inventive step in light of US 2008/0160226.

I allow the applicant 60 days from the date of this decision in which to propose suitable amendments to overcome the above findings.

Costs are awarded against the Applicant, OVD Kinegram AG.

REASONS FOR DECISION

Background

1. Application 2010294467 in the name of OVD Kinegram AG (the Applicant) is the Australian national phase of PCT application PCT/EP2010/005552 (publication number WO 2011/029602) and has a priority date of 11 September 2009. A request for examination was filed on 18 March 2013. A notice of acceptance of the Application was published on 4 September 2014. A Notice of Opposition was filed on 4 December 2014 by Innovia Security Pty Ltd (the Opponent) and a Statement of Grounds and Particular was filed by the Opponent on 4 March 2015.

2. Evidence in Support was completed on 4 June 2015. Evidence in Answer was completed on 4 September 2015. There was no Evidence in Reply. The Applicant proposed amendments to the specification on 4 September 2015. The amendments were advertised as allowed on 28 January 2016.

3. The hearing was held in Canberra on 15 June 2016.

   Evidence

4. The Opponent’s evidence comprises a declaration by Dr Bruce Hardwick filed on 4 June 2015 with exhibits BAH-1 to BAH-15.

5. The Applicant’s evidence comprises:

   • A first declaration by Karel Schell dated 18 August 2015 with exhibits KS-1 to KS-4
   • A second declaration by Karel Schell dated 3 September 2015,
   • A declaration by Andreas Schilling dated 3 September 2015.

   Specification

6. The specification (as amended with proposed amendments of 4 September 2015) ends with 31 claims comprising one independent claim and 30 dependent claims. The independent claim is reproduced below:

   1. A multilayer body comprising:

   a transparent first layer, in which a multiplicity of microlenses arranged in accordance with a microlens grid are impressed in a first region; and

   a second layer, which is arranged below the first layer and in a fixed position with respect to the first layer and has a multiplicity of microimages arranged in accordance with a microimage grid and in each case in an at least regional overlap with one of the microlenses of the microlens grid for the purpose of generating a first optically variable information item;

   wherein grid pitches of the microimage grid and of the microlens grid in each case in at least one spatial direction are less than 300 μm; and

   wherein the second layer has at least one first zone, in which the microimages are provided, and each micro image is formed by one or a plurality of image regions surrounded by a background region;

   and wherein the second layer has at least one second zone, in which optically active surface structures for generating a third optically variable information item are provided, said third optically variable information item differing from the first optically variable information item.

   The invention

7. The invention is a security element with two distinct regions. A first region comprising microlenses above corresponding microimages, and a second region comprising ‘optically active surface structures’ (i.e. diffractive gratings and the like). This is illustrated most clearly in Figure 8 reproduced below, with a first region indicated by areas 34 and a second region indicated by areas 33:

   How are the microimages and optically active surface structures formed?

8. The description of the opposed specification discloses a process of forming both microimages and optically active surface structures in various ways.

9. The microimages can be formed from: a patterned structured partial metal layer (page 19 lines 23 to 34), offset printing (lines 22 to 34), gravure printing (page 20 line 37), screen printing (page 20 line 37), pad printing (page 21 line 1), intaglio printing (page 21 line 1), inkjet printing (page 21 line 2), photoresist (page 21 lines 4 to 11), replication lacquer layer (page 21 line 11 to 21), optically active pigments (page 22 lines 11 to 27).

10. Diffraction structures suitable for use as optically active surface structures are described at page 12 line 8 to page 13 line 4, and page 21 lines 4 to page 22 lines 9. The optically active surface structure can be formed from a dot matrix or e-beam hologram (page 21 line 37).

11. Both the microimages and optically active surface structures can be formed by the same process by surface reliefs being impressed into a lacquer layer and then coated with a metallic layer (page 21 lines 21 to 31).

    Claim construction

12. As will be discussed further in the decision, the Applicant’s argument with respect to the novelty of the claims in light of D9 is predicated on the claims being limited to the two zones of the second layer being formed with the same process.

13. The Macquarie Dictionary defines a layer as:

    “a thickness of some material laid on or spread over a surface; a stratum.”

14. I will adopt the ordinary meaning of the word layer; a layer is a sheet or thickness of material that covers a surface. A layer is not necessarily uniform or homogeneous which is consistent with the description which states at page 12 lines 8 to 16:

    “The second layer can consist of an individual layer or of a plurality of partial layers, in metallic layer, a colored lacquer particular has a layer and/or a photoresist layer which is provided in the first region in the image regions and is not provided in the background region, or vice versa. In this case, the photoresist layer preferably consists of a positive or negative photoresist, which more preferably can also be colored with a dye or pigment.”

    OPPOSITION UNDER SECTION 59

    Onus of proof

15. The request for examination for this application was filed prior to 15 April 2013. As a consequence, substantive amendments of the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 do not apply to the present patent application. In other words, the consideration of grounds of opposition is under the Act as it existed prior to the Raising the Bar amendments. However, the notice of Opposition was filed after 15 April 2013, thus the opposition procedures that apply are those prescribed under the Regulations of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012.

16. The onus of proof in this opposition proceeding rests with the opponent, who must demonstrate that is clear that a valid patent cannot be granted (F.Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283; Commissioner of Patents v Sherman [2008] FCAFC 182; Genetics Institute Inc v Kirin-Amgen Inc [1999] FCA 742).

    Grounds of Opposition

17. The patent was opposed on the grounds that the patent application lacks of novelty, an inventive step, fair basis, full description, clarity and is not a manner of manufacture.

    Section 40

    Full description

18. The test for sufficiency of description is set out in the High Court decision in Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd (2001) HCA 8 at [25]:

    "… will the disclosure enable the addressee of the specification to produce something within each claim without new inventions or additions of prolonged study of matters presenting initial difficulty?"

    “One of the microlenses”

19. The Opponent states at paragraph 159 of their submissions:

    “There is insufficient disclosure of how to create a moiré effect (see claims 27 and 28) while limiting each micro image to be “… in at least regional overlap with one of the micro lenses…” as required by claim 1. The use of “one” in [claim] 1 implies “not more than one, however moiré results from a relative difference in period between the micro image grid and micro lens grid (caused by an actual difference in periods and/or by rotation of respective grids). With such difference in period, it is necessary that micro images will extend in most cases over at least two micro lenses.”

    The relevant portion of claim 1 states (with my emphasis added in bold):

    “a multiplicity of microimages arranged in accordance with a microimage grid and in each case in an at least regional overlap with one of the microlenses of the microlens grid for the purpose of generating a first optically variable information item”

20. The claim defines a multiplicity of microimages overlapped by microlenses. It further defines that “in each case” (i.e. each microimage) is overlapped by one microlens. Thus the multiplicity of microimages has a corresponding multiplicity of microlenses. The Opponent’s construction of this aspect of the claim is not adopted thus obviating the Opponent’s argument with respect to this aspect of the claim.

    Registration between microlenses and microimages

21. The Opponent states at paragraph 160:

    “There is insufficient disclosure of a process to ensure registration between the micro lenses and micro images, and the first zone(s) and the second zone(s). The problem of incorrect registration is described, but the solution is merely to ensure registration occurs. However, in order to prepare the multilayer body, in particular with reference to the embodiments where the micro lenses are either absent or covered with a lacquer in the second zones (i.e. in the location of the optically active structures), registration is necessarily required but no disclosure is forthcoming as to how to achieve this. The person skilled in the art would therefore have to undertake new inventions or additions or prolonged study of matters presenting initial difficulty.”

22. The Applicant states:

    “The conclusion in paragraph 160 is flawed because the claims are to a multilayer body, not to a method of producing a multilayer body. The invention may be difficult to make but that does not mean it will not be recognised when made”

23. The description states at page 6 lines 12 to 21:

    “The first layer is then arranged on the front side of the carrier substrate and the second layer is arranged on the rear side of the carrier substrate. This procedure affords a number of advantages: thus, firstly the security of the security element is further increased by virtue of the fact that the first layer and the second layer have to be applied to a common carrier substrate by means of two application steps to be performed with register accuracy with respect to one another.”

24. I am satisfied that the above disclosure (at page 6 lines 12 to 21) sufficiently describes the procedure for assembling the multilayer body while keeping registration accuracy between the microlenses and microimage arrays.

    Clarity

25. The rules of construction for an Australian patent specification are well summarized in Decor Corp v Dart Industries 13 IPR 385. Recently the correct application of these rules 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.”

26. Where it is impossible to ascertain the scope of invention the claims should be found to lack clarity (see Decor Corp v Dart Industries 13 IPR 385 at 400).

    Third optically variable information

27. The Opponent states at paragraph 163:

    Claim 1 is unclear as it refers to “first optically variable information” and third “[optically] variable information”, however makes no reference to any “second optically variable information”.

28. The Applicant states:

    “The objection in paragraph 163 is erroneous. The Applicant can label each integer as they wish”

29. Although naming the features of the independent claim non-sequentially arguably reduces the readability of the claim, the meaning of the claim is clear.

    Optically active structures

30. The Opponent states at paragraph 165:

    “It is unclear what is meant by the term “optically active structures”, as this implies an active, not passive, interaction.”

31. The applicant states:

    “The issue raised in paragraph 165 is resolved by reading the specification”

32. The term ‘optically active’ in optics typically refers to a substance’s ability to effect the polarisation of light travelling through it or reflecting from it. It is clear from the specification, that the phrase ‘optically active’ is not being used to describe an effect on the polarisation of light. Instead, the term ‘optically active’ is explained at page 9 lines 26 to 33 to mean ‘optically variable’ (changing colour dependent on the angle of viewing, e.g. a diffraction grating). I consider this aspect of the claim to be clear and unambiguous.

    Grid pitch less than 300 microns

33. The opponent states at paragraph 167:

    “Claim 1 is unclear as it is ambiguous as to whether the “grid pitches” of the micro image grid and the micro lens grid are less than 300 microns in a common spatial direction or not.”

34. The Applicant states:

    “The nature of the objection in paragraph 167 is not clear”

35. The claim has been drafted to capture both one dimensional (cylindrical microlens) and 2 dimensional (spherical microlens) arrays. The claim is essentially stating that the distance between (the centres of) adjacent microlenses is less than 300 microns. I consider this aspect of the claim to be clear and unambiguous.

    In particular

36. The opponent states at paragraph 168:

    “At least Claims 2, 3, 4, and 6 are unclear due to the ambiguity in claim scope created by the use of the term “in particular”.”

37. The Applicant states:

    “On a fair reading of the specification the use of “in particular” is simply read as “or”. The objection in paragraph 168 is misplaced”

38. The words ‘in particular’ have been used to specify a narrower range within the broader range defined in the claim. Claims are construed as broadly as is reasonable, thus words such as “in particular” or “preferably” do not provide a limitation on the scope of the claim. The scope of these claims is clear.

    Antecedents

39. The opponent states:

    “Claim 6 is unclear as there is no antecedence for “the carrier substrate” of the valuable document.”

40. The applicant states:

    “Regarding paragraph 169, if there is any irreconcilable ambiguity it is easily resolved by amendment”

41. Claim 6 is defining that the carrier substrate of the multilayer body is also the substrate of the valuable document. Although claim 6 does not explicitly define that the valuable document includes a carrier substrate, this is readily inferred.

    Claim 2

42. Claim 2 states that the grid pitch of the microlens grid in a first spatial direction is greater than the dimension of the microlens in the first spatial direction. The claims should state “the respective grid pitch of the microimage grid” rather than “the respective grid pitch of the microlens grid”. With this correction made, claim 2 corresponds with page 30 lines 3 to 9 and Figure 2. I consider this to be an obvious mistake because: a) it can be resolved by reference to the description, and b) Dr Hardwick appears to address the claim (at paragraph 72 of his declaration) as if the obvious mistake had been identified and corrected.

    Fair basis

43. The tests accepted in LockwoodSecurity Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 69, 98-99 as being relevant to the consideration of fair basis are:

    …whether there is a real and reasonably clear disclosure of the claimed invention in the specification [from Société Des Usines Chimiques Rhône-Poulenc v Commissioner of Patents (1958) 100 CLR 5 and cited with approval in Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79] or

    …whether the claims travel beyond the subject matter of the invention described in the specification [Olin v Super Cartridge (1977) 180 CLR 236].

    Lacquer layer

44. The opponent states:

    “Claim 11 is not fairly based, as the purpose of the lacquer layer according to the description is to eliminate the focussing effect of the underlying lenses. Therefore, claim 11 should specify this functionally or provide structural limitations providing such an effect.”

45. The Applicant states:

    “The nature of the objection in paragraph 171 is unclear as claim 11 does include a limitation on the refractive index difference”

46. The description provides a clear description of providing a lacquer layer over the second zone. There is no necessity for the claims to specify the purpose of such a feature for the claims to be considered fairly based.

    Section 40 Conclusion

47. The invention is considered fully described. The claims are considered fairly based and clear. The applicant is invited (but not required) to propose amendments to claim 2 to remove the obvious mistake identified.

    Novelty and Inventive step law

48. 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.”

49. 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]).

1. 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.”

   Novelty and inventive step preliminary remarks

2. The Opponent alleged the claimed invention lacked novelty and inventive step in light of the following documents:

   • D8: AU2007211654 A1 (Tompkin et al) 9 August 2007
   • D9: US 2008/0160226 A1 (Kaule et al) 3 July 2008
   • D10: WO 2006/125224 A2 (Steenblik et al.) 23 November 2006

3. To improve the natural flow of the decision I have considered these documents in the order: D8, D10, D9. Also in an effort to improve the natural flow of the decision, and in a departure from convention, I have considered the novelty and inventive step together for each prior art document rather than the typical approach of first considering novelty of all the prior art documents and then considering by the inventive step of all prior art documents.

   Inventive step preliminaries

   The person skilled in the art

4. The experts who provided evidence, Dr Hardwick, Mr Schell and Mr Schilling, clearly have a great deal of experience in the field of security device technology and thus are each considered to have knowledge representative of a person skilled in the art.

5. The Opponent states:

   “A skilled addressee would have a higher level science or engineering qualification, with either qualifications in physics or industry experience relating to the physics of optical devices including lenses.”

6. I am satisfied with this characterisation of a person skilled in the art.

   The problem

7. The description states at page 1 lines 27 to 29:

   “The invention is based on the object, then, of specifying an improved multilayer body which conveys an optically variable impression.”

8. I am satisfied that this statement forms the problem which the person skilled in the art sought to overcome at the priority date.

   Ascertained, understood and regarded as relevant

9. As the art of security documents is competitive and well documented in patents, research papers, conference papers, and textbooks, I consider it reasonable that a person skilled in the art would review all these relevant sources of information.

10. Documents D8, D9 and D10 all relate to security documents utilising optically variable effects thus are clearly relevant to the problem. Given that the person skilled in the art would routinely review technical documents including patents, I am satisfied that a person skilled in the art would have ascertained, understood and regarded as relevant these documents.

    D8: AU2007211654 A1 (Tompkin et al) 9 August 2007

    Novelty in light of D8

    First embodiment

11. The first embodiment of D8 is disclosed at page 4 lines 25 to page 5 line 8:

    “It can be provided that the image representation is a geometrical figure, one or more alpha-numeric characters or a logo. If the multi-layer body according to the invention is used as a security element in a banknote provided with a window, the micro-pattern can be a currency symbol, for example a Euro or a dollar sign. Further interesting optical effects can be produced by the combination of the above-mentioned configurations of the micro-patterns with the background region. Thus for example an alpha numeric character can be represented against a holographic background, that is to say the first opaque partial region can be in the form of a hologram or KINEGRAM®. By way of example, a holographic background region can appear perforated by the above-mentioned Euro or dollar sign, which again deflect the view on to a transparent light surface, like a keyhole. In that case, the Euro or dollar sign can apparently travel over the hologram, upon a change in the viewing direction. The hologram or KINEGRAM® can be somewhat limited in terms of its quality by the micro lenses, in which case the micro-lenses do not have a magnifying effect for the hologram or KINEGRAM®.”

12. The Opponent argues:

    “D8 describes the micro-patterns as being represented against a holographic background such a hologram or Kinegram™ at page 4, line 31 to page 5, line 1. The first zones are provided by the micro-images with peripheral background to generate the necessary visual contrast, while the second zones of the background regions extending between the spaced micro-images. The hologram or Kinegram™ provides the third optically variable information item required by claim 1 which would have a distinct appearance to the moiré magnification of the micro-images.”

13. Mr Schilling states at 3.4.1 to 3.4.3 of his declaration:

    “I am named as a co-inventor on D8, as such I am well aware of what is disclosed in this document.

    D8 discloses a multi layer body for viewing a front face and a rear face in transmitted and incident light which comprises a transparent first layer (10) with micro lenses (12) and a second layer (14) with opaque and transparent subareas. The grid width of the microlens grid and the micro pattern grid is 40μm (page 21, lines 1-9, fig. Sa and Sb). The general impression built by such a multi layer body shows transparent image areas which change their position depending on the viewing angle and seem to float in front of an opaque background (page 3, lines 11-14). D8 also discloses that the opaque subareas can be formed by a hologram or a Kinegram (page 4, line 29 to page 5, line 8).

    I have produced a sketch (below) that exemplifies the invention disclosed in D8.

    In contrast to the sketch that exemplifies the invention claimed in the OVD Kinegram application (shown above in 2.1), D8 does not disclose any second zones. Instead, the opaque, diffractive regions correspond to the background region in the OVD Kinegram application. As such, the combination of opaque diffractive regions and transparent regions in D8 correspond to the microimages, i.e. the first zone.”

14. I consider that the background provides only a “first optically variable information item”. There is no disclosure of the first and third variable information items differing; the claims require that “third optically variable information item differing from the first optically variable information item”. Consequently claim 1 is considered novel in light of the first embodiment of D8.

    Second embodiment

15. The Opponent states at paragraph 40 of their submissions:

    “Similarly, as discussed at length in the Evidence in Answer, the claim encompasses the case where the at least one second zone is not a multiplicity of second zones in amongst the first zones, but off to one side. While this simple collocation of two known optically variably devices may not have any working interrelationship, such an arrangement is also shown in Figure 7 of D8 where the moiré magnification device 17 sits adjacent the Kinegram 71 of the wired security window of the banknote 7.”

16. The embodiment of Figure 7 shows two regions; a first region 70 comprising microlens/microimages and a second region 71 comprising a KINEGRAM® which is a type of hologram made of diffractive structure.

17. D8 states at page 21 lines 22 to 25:

    “Figure 7 shows the front view of a second window banknote 7, with the multi-layer body 6 of Figures 6a to 6c being arranged in the window 70 of the banknote 7. The window banknote 7 further has a KINEGRAM® (71) and an embossed declaration of value (72).”

18. There is nothing to suggest the microimages making the “$” symbol in item (70) are in the same layer as the Kinegram (71). Indeed, because kinegrams and the printing of microimages use different processes, it is possible that they would be made separately and then: a) adhered on top of one another or b) arranged with a large separation, thus not necessarily considered a single layer. I do not consider the second embodiment of D8 to be an inherent disclosure of the first and second zone in the same layer. Consequently claim 1 is novel in light of the second embodiment of D8.

    Inventive step in light of D8

    First embodiment

19. I have found the first embodiment of D8 does not disclose the feature of a third optically variable information item differing from the first optically variable information item. I am not satisfied that a person skilled in the art would be motivated to add a third optically variable information item, since this requires the non-obvious concept of zones within the same layer having different optical effects. Claim 1 is inventive in light of the first embodiment of D8.

    Second embodiment

20. I have found the second embodiment of D8 does not disclose, either explicitly or inherently, the feature of the first and second zones in the same layer. I am not satisfied that a person skilled in the art would be motivated to modify D8 such that the two zones would be in the same layer, as this would require a significant change in the manufacture of the article disclosed in D8. Claim 1 is inventive in light of the second embodiment of D8.

    D10: WO 2006/125224 A2 (Steenblik et al.) 23 November 2006

    Novelty in light of D10

21. D10 discloses moiré magnification of a micro-image array through a corresponding micro-lens array.

22. The Opponent state in their submissions:

    “D10 describes the icon layer to optionally have liquid crystal (LC) materials or iridescent ink (see options for icon layer described at page 27, line 12 to page 28, line 18). Iridescent coatings may be applied to the icon layer to achieve particular optical effects (see page 23, line 19 to page 26, line 10). The embodiment shown in Figure 39(B) of D10 uses a coated icon layer 932. Foil layer 942 is applied with adhesive 940 and lacquer layer 944 is optionally provided with a holographic surface relief (see page 108, line 11 to page 109, line 8). Hence, the zones in-between the microimages have optically active surface structures which generate a third optically variable information item.”

23. Figure 39(b) is reproduced below:

24. This is essentially the same argument as with respect to D8, as to whether the background region of the microimage can be considered both a first and third zone. Similarly with the conclusion in D8, I am not satisfied that D10 discloses a third zone different from the first zone. Therefore the claims are novel in light of D10.

    Inventive step in light of D10

25. I have found the first embodiment of D10 does not disclose the feature of a third optically variable information item differing from the first optically variable information item. Similarly with the discussion in regards to the inventiveness of the first embodiment of D8, I consider this feature to not be obvious to a person skilled in the art.

    D9: US 2008/0160226 A1 (Kaule et al) 3 July 2008

    Novelty in light of D9

26. D9 relates to security features for banknotes and other value documents using a combination of diffractive optical structures and the moiré magnification of an image grid.

27. Figure 22 discloses microimages and diffraction gratings in adjacent zones.

28. The corresponding description states at paragraphs 155 and 156:

    “For example, in security element areas in which the lens arrangement 12 exhibits no micro lenses 112, instead of a reflecting metal layer, a diffraction grating can be provided. Such a development is shown in FIG. 22.

    The security element 220 depicted in FIG. 22 corresponds in structure substantially to the security element 140 in FIG. 15. Here, however, to further increase the counterfeit protection, a diffraction grating 224, for example an embossed hologram, is provided that is embossed in areas in the reflecting metal layer 245 that are not superimposed by the microlenses of the lens arrangement 12. Now, in addition to the moiré magnification effect produced by the lens arrangement 12 in coaction with the printed microstructures 242 of the microstructure arrangement, a viewer additionally perceives the optically variable effect of the quasi-embedded embossed hologram.”

29. The two zones are formed from different processes: the microimages are made by printing, whereas the hologram is made by embossing.

30. The Applicant conceded that Figure 22 of D9 discloses all the features of claim 1 except the feature of the microimages and optically active surface structures (diffractive structures) in the second layer.

31. Mr Schilling states at paragraph 3.5.1 and 3.5.4 of his declaration:

    “Document D9 discloses a security element (220) comprising a lens arrangement (12) and printed micro structures (242) as well as a diffraction grating (224) (see Fig. 22).

    In D9 the diffraction grating is arranged in regions where there are no microlenses (paragraphs 155 and 156). Furthermore, the printed micro structures (242) and the diffraction grating are not in the same layer. Rather, the diffraction grating (224) is embossed into the reflecting metal layer (245) (see paragraph 156). However, the micro structures (242) are printed (see paragraph 156), as such, the micro structures (242) and the diffraction grating exist in different layers.

    The opponent argues that in the context of producing embossed micro structures, paragraph 112 discloses that the embossing stamp can also have diffractive structures. The opponent further argues that as such, the metal layer (15) (see Fig. 2a), shows apart from the micro structure (116) diffractive structures in the plane regions between the micro structures.

    However, according to the teachings of D9, the embossed microstructures, which are explained with respect to Fig. 23 are of a much larger scale than diffractive structures (see Fig. 7 for the scale of microstructures (166)). Technically, it is extremely complicated to emboss structures of such different heights (e.g. structures in the nm range and structures with different profile heights that achieve a different contrast due to the different heights as shown in Fig. 23 and paragraph 108). As such, from a technical point of view, a person skilled in the art would not emboss the microstructures and the diffractive structures in one layer, but would rather print the microstructure and emboss the diffractive structures.”

32. Mr Schilling argues that D9 discloses diffraction gratings and the printed micro structures on different layers. This argument is predicated on the assertion that the diffractive structures and printed microstructures are of different scales and made by different processes, and therefore must be in different layers. However, I disagree with that assertion. I have construed the word layer to mean a sheet or thickness of material that covers a surface and it is not necessarily uniform or homogeneous; thus the word layer does not exclude two zones manufactured by different processes. My construction of the word layer is consistent with Dr Hardwick’s evidence at paragraph 117 to 124.

33. I consider that D9 discloses a single layer comprising a side-by-side arrangement of diffraction gratings and printed microstructures. The features of claim 1 are disclosed in D9, thus claim 1 lacks novelty in light of D9.

    Inventive step in light of D9

34. Claim 1 lacks novelty in light of D9 and so it follows that claim 1 also lacks inventive step in light of D9.

    Novelty and Inventive Step of dependent claims in light of D9

    Claim 2 - Novelty

35. Claim 2 states:

    The multilayer body as claimed in claim 1, wherein the respective grid pitch of the microimage [sic] grid in a first spatial direction is greater by at least 50%, in particular by more than 100%, than the respective dimension of the respective microlens in the first spatial direction.

36. The description states at page 30 lines 3 to 9:

    “...[I]n the embodiment according to figure 2 the dimension 45 of the microimages 21 in a first spatial direction, here in the direction of the sectional line of the section shown in figure 2, is more than 50%, in particular more than 100%, of the dimension 43 of respectively adjacent microlenses 21 in the first spatial direction.”

37. There is no disclosure in D9 of the microimages being larger than the microlenses. Claim 2 is considered novel in light of D9.

    Claim 2 - Inventive step

38. The Opponent states in the submissions:

    “As discussed at Hardwick, paragraph 31, interstitial spacing between the lenses would be immediately apparent to the skilled addressee to give the OV effects in the second zone.”

39. Dr Hardwick states that “It makes sense that the lenses would have some interstitial spacing so that the optically variable effects of the surface structure in the second zone would be more prominent.”, however Dr Hardwick’s evidence does not establish that making microimage larger than the microlenses would be obvious.

40. Claim 2 is considered to provide a feature that would not be a matter of routine to a person skilled in the art. Claim 2 is considered to have an inventive step over the prior art.

    Claim 3 - Novelty

41. Claim 3 states:

    The multilayer body as claimed in either of the preceding claims, wherein a maximum structure height of the respective microlens is at least 35%, in particular at least 50%, of the dimension of the respective microlens in the first spatial direction.

42. The description states at page 29 line 6 to 9:

    “...[T]he microlenses 21 have a maximum structure height, that is to say dimension 44, which is at least 25%, in particular at least 50%, of the dimension 43 of the microlenses.”

43. D9 discloses at paragraph 85 discloses:

    “In the example, the microlenses 112 exhibit a lens aperture of 20 µm, a lens radius of approximately 12 µm and a lens spacing of 21 µm.”

44. My understanding of this excerpt is illustrated below:

45. Thus the height is 5.4µm for a width of 20µm; a ratio of 27%. This is below the claimed ratio of at least 35%, therefore does not fall within the scope of the claims. Claim 3 is novel in light of D9.

    Claim 3 - Inventive step

46. The Opponent states:

    “Hardwick points out at paragraphs 32 and 33 that the lens height profile specified in claim 3 is ‘stating the obvious’. The claim merely defines the lenses to be ‘quite tall and therefore curved’ in order to reduce the focal length and hence the overall thickness of the device. There is nothing unusual or difficult associated with lenses of this type.”

47. Dr Hardwick states at paragraphs 32 and 33:

    “Claim 3 describes the height of the micro lenses as at least 35% or at least 50% of the dimension of the micro lens in the first spatial direction (the lens base diameter for spherical lenses). This is specifying that the lenses should be quite tall and therefore curved. The curved profile reduces the focal length so the layer thicknesses can be reduced. This is really just stating the obvious, and I am surprised that they have bothered to claim such a basic idea. Reading back through the description to make sure I wasn’t missing the point of this claim I see that on page 29, lines 6 to 14, they talked about a lens height of at least 25% of the base dimension (not 35% as in the claim) but it is solely for reducing the focal length and therefore the layer thickness.

    There is nothing unusual or difficult about forming lenses with a height of 50% of the base diameter. Spherical lenses are often formed as a section of a sphere and hence the lens height is equal to the radius, which is 50% of the diameter.”

48. Consistent with Dr Hardwick, I do not consider there is any surprising benefit in making the height of the microlens at least 35% and thus it would be a matter of routine for a person skilled in the art to make such a modification to D9. Claim 3 lacks inventive step in light of D9.

    Claim 4 - Novelty

49. Claim 4 states:

    The multilayer body as claimed in any of the preceding claims, wherein a respective dimension of the microimages in the first spatial direction is more than 50%, in particular more than 100%, of the dimension of the respectively adjacent microlens in the first spatial direction.

50. The Opponent states in the submissions:

    “D9 discloses an arrangement in which the size of the micro-image structures is approximately the same as those of the associated micro-lenses (see [0091] and [0095]). In particular a lens diameter of about 30 microns corresponds to micro-structures that are also about 30 microns which in turn requires the micro-structures are dimensioned about 100 percent of the dimension of the respectively adjacent micro-lens.”

100. I consider that D9 discloses the microimages of at least 50% a dimension of the microlenses in Figure 7. Thus claim 4 lacks novelty in light of D9.

Claim 4 - Inventive step

101. Claim 4 lacks novelty and it follows that claim 4 also lacks inventive step.

Claim 5 - Novelty

102. Claim 5 states:

The multilayer body as claimed in any of the preceding claims, wherein the multilayer body has a carrier substrate having a layer thickness of more than 6 μm, in that the carrier substrate is embodied in transparent fashion in a second region or has a window-shaped perforation, wherein the second region is covered by the first region, and in that the first layer is arranged on the front side of the carrier substrate and the second layer is arranged on the rear side of the carrier substrate.

103. The Opponent states:

“Figure 2A depicts a multi-layer body with a carrier substrate 14 and an adhesive layer 11. As the micro-structures are spaced from the lenses by the focal length and the lens diameter is exemplified as 30 microns (see [0095]), the substrate thickness is greater than 6 microns. Furthermore at [0098], the carrier substrate thickness is described as between 1 micron and 30 microns for the embossed microstructures shown in Figures 9A and 9B, the carrier substrate 14 is described as PET at [0073] and therefore transparent. At [0170] the multi-layer device covers a window in a value document. Similarly [0039] describes the security element spanning a transparent area or perforated hole in a value document.”

104. Claim 5 appears to correspond with Figure 3 or Figure 6.

105. Page 31 lines 2 to 15 states:

“In a region 32, the carrier substrate 10 is embodied in transparent fashion. If the carrier substrate 10 consists, for example, of a plastic film or of a multilayered laminate of a plurality of plastic layers, then these plastic layers are embodied such that they are transparent to the human observer in the region 32. If a paper substrate is involved, then the carrier substrate 10 preferably has in the region 32 a window-shaped perforation, which is then covered on both sides by the layers shown in figure 3. Outside the region 32, the carrier substrate 10 is preferably embodied in opaque fashion, that is to say printed with corresponding opaque layers or provided with a correspondingly colored layer.”

106. Claim 5 is essentially a windowed carrier substrate. D9 discloses the invention as a window in a banknote, for example at paragraphs 71 and 160. D9 discloses the transparent carrier substrate to have a thickness “of about 1 to 30µm, preferably between 1 and 15µm” at paragraph 98 thus discloses a thickness of at least 6µm. Claim 5 thus lacks novelty in light of D9.

Claim 5 - Inventive step

107. Claim 5 lacks novelty and it follows that claim 5 also lacks inventive step.

Claim 6 - Novelty

108. Claim 6 states:

The multilayer body as claimed in claim 5, wherein the multilayer body is a valuable document, in particular a banknote, and in that the carrier substrate forms the carrier substrate of the valuable document and has a layer thickness of 30 μm to 200 μm.

109. Paragraph 94 of D9 states:

“Ideally, security elements exhibit a total thickness of less than 50 μm. As a result, microlenses and thus microscopic structures having very high resolution are necessary.”

110. I consider this to be a disclosure of a layer thickness within the claimed range. Claim 6 lacks novelty in light of D9.

Claim 7 - Novelty

111. Claim 7 states:

The multilayer body as claimed in either of claims 5 and 6, wherein the multilayer body has in the first region a third layer, which is arranged below the second layer and which, when the multilayer body is viewed from the rear side, generates a second optically variable information item, which is not visible to the human observer when viewing the front side of the multilayer body and differs from the first optically variable information item.

112. Dr Hardwick states at paragraphs 133 and 134:

“The arrangement shown in Figure 17 of D9 has layers beneath the microstructures 174 (see [0171] and [0172]). A moiré magnification is generated which is viewable from the rear only because of the opaque metal layer 175. This provides a second optically variable information item as required by the claim.

As described at [0039], it is preferable to have different optical appearances when viewing the security element from each side. Accordingly, all the aspects of claim 7 are in D9.”

113. I am not satisfied that the disclosure in Figure 17 can be read together with the embodiment of Figure 22 of D9. Claim 7 is considered novel in light of D9.

Claim 6 - Inventive step

114.  Claim 6 lacks novelty and it follows that claim 6 also lacks inventive step.

Claim 7 - Inventive step

115. The evidence does not establish that a person skilled would be motivated to combine the features of Figure 17 with the embodiment of Figure 22 of D9. Consequently, claim 7 is inventive in light of D9.

Claim 8 - Novelty

116. Claim 8 states:

The multilayer body as claimed in any of the preceding claims, wherein the multilayer body has a translucent layer arranged between the first layer and the second layer.

117. Paragraph 78 of D9 states:

“The metal layer 15 can also be formed as a semitransparent metal layer. Such a semitransparent metal layer can be produced, for example, by a very thin metal layer or a screened metal layer.”

118. The Opponent states:

“D9 describes the metal layer 15 covering the micro-structures 116 as ‘semi-transparent’ which is synonymous with ‘translucent’. Hence the metal layer 15 provides a translucent layer between the lenses and the micro-structures. D9 also discloses a coloured carrier substrate at [0099], [0110] and [0113]. The 467 Application has equated coloured or pigmented layers as being translucent.”

119. I am satisfied that the semitransparent layers can be read together with Figure 22. Claim 8 lacks novelty in light of D9.

Claim 8 - Inventive step

120. Claim 8 lacks novelty and therefore also lacks an inventive step.

Claim 9 - Novelty

121. Claim 9 states:

The multilayer body as claimed in claim 8, wherein the multilayer body has the carrier substrate, which is embodied in transparent fashion in the first region or has a window-shaped perforation.

122. The Opponent states:

“In claims 41 and 42, D9 defines that the carrier substrate of a value document such as a banknote can comprise the carrier layer of the security element. Claims 43 to 44 go on to define the security element in the window area of the valuable article (i.e. banknote). This mirrors the description at [0039] regarding value documents with transparent windows.”

123. Claim 9 merely requires that the invention of claim 8 has a transparent carrier substrate. The carrier substrate (14) is disclosed as transparent throughout D9. Claim 9 lacks novelty in light of D9.

Claim 9 - Inventive step

124. Claim 9 lacks novelty and therefore also lacks an inventive step.

Claim 10 - novelty

125. Claim 10 states:

The multilayer body as claimed in claim 9, wherein the microlenses are provided in the first and second zones.

126. The Opponent states:

“As discussed above in relation to claim 1, the security element 10 shown in Figure 2A of D9 is an example of the micro-lenses provided in the first and second zones, that is the micro-lenses cover microstructures within the first zone and the optically active surfaces in the second zone extend between the microstructures.”

127. Dr Hardwick states at paragraph 120:

“As described at [0027] the layer 15 shown in Figure 2a is a thin film element that has the standard absorber/dielectric/reflector layer structure which produces optically variable effects similar to those provided by iridescent inks and paints.”

128. Paragraph 27 of D9 states:

“Instead of a metal layer, the reflection layer can also be formed by a reflecting thin-film element. Here, the thin-film element can advantageously comprise a reflection layer, an absorber layer and a dielectric spacing layer disposed between the reflection layer and the absorber layer. In addition, in the reflection layer, apertures can be provided in the form of patterns, characters or codes that form transparent or semitransparent areas in the thin-film element.”

129. The embodiment of Figure 2a even when read together with paragraph 27 is not considered to disclose all of the features of claim 10. On a generous reading of this part of D9, this is only a disclosure of microimages with an optically variable background collectively forming a first zone. There is no disclosure of a second zone with microlenses, separate and optically distinct from the first zone. Consequently, claim 10 is novel in light of D9.

Claim 10 - Inventive step

130. The purpose of microlenses is to create a moiré effect from the underlying microimages. Covering the optically variable second zone in microlenses would not result in moiré effect. Although the optically variable effect is still visible if covered with microlenses, the description of the opposed specification indicates that the effect is somewhat blurry (page 37 line 13) and less brilliant (page 36 line 35). Consequently I am not satisfied the person skilled in the art would be motivated to modify D9 such that microlenses covered both the first and second zones. Therefore claim 10 is inventive in light of D9.

Claim 11 - Novelty

131. Claim 11 states:

The multilayer body as claimed in either of claims 9 and 10, wherein in the at least one second zone a lacquer layer is applied, in particular printed, onto the first layer, the refractive index of said lacquer layer differing from the refractive index of the first layer by less than 0.3.

132. This claim corresponds to the embodiment of Figure 7 reproduced below:

133. The corresponding description states at page 36 lines 5 to 15:

“Furthermore, in the zones 33, a lacquer layer 30 is printed onto the surface of the transparent layer 13. The lacquer layer 30 is a lacquer layer composed of a material whose refractive index differs from the refractive index of the material of the transparent layer by not more than 0.3. This has the effect that the optical effect of the microlenses 21 is extinguished in the zones 33 for the human observer and only the optically variable effect generated by the optically active surface structure 24 thus becomes visible in the zones 33 for the human observer.”

134. D9 does not disclose a lacquer layer applied to the first surface. Claim 11 is novel in light of D9.

Claim 11 - Inventive step

135. Although the end result of the addition of the lacquer layer to the microlenses is essentially the same as the invention in Figure 22 of D9, the two inventions are constructed differently. I am not satisfied that a person skilled in the art would be motivated to modify D9 such that microlenses were added to the second zone and then covered with lacquer. Claim 11 is inventive in light of D9.

Claim 12 - Novelty

136. Claim 12 states:

The multilayer body as claimed in any of claims 9 to 11, wherein at [sic] least one second zone has a smallest dimension of more than 300 μm and is shaped in patterned fashion for generating a fourth information item.

137. The Opponent states:

“The embodiment shown in Figure 11 of D9, the micro-images are provided by the embossed micro-structures 92, while the metal layer 95 may in fact be a thin-film structure exhibiting a colour shift effect (see [0124]). The areas of thin-film structure extending between the microimages in the first zones, provide the second zones with optically active surface structures. Apertures 96 are provided in the thin-film structure 95 to reveal a motif in transmitted light. The aperture thin-film structure extending around the microstructures 92 provides a second zone that is at least 300 microns in one dimension, and shaped to generate a fourth information item in the form of a motif viewable in transmitted light.”

138. Figure 22 discloses two zones arranged in alternating order. I consider this alternating pattern to be a pattern fashion providing a fourth information item.

139. The accompanying description for Figure 22 provides that the optically variable zone can be perceived. Since the minimum dimension of the claim is 300µm which is the threshold spatial resolution of the eye, it follows that the disclosure of Figure 22 is above this threshold. Claim 12 lacks novelty in light of D9.

Claim 12 - Inventive step

140. Claim 12 lacks novelty and therefore lacks inventive step.

Claim 13 - Novelty

141. Claim 13 states:

The multilayer body as claimed in any of claims 9 to 11, wherein the first region is subdivided into a multiplicity of first and second zones, and in that the first and second zones are arranged in accordance with a regular grid having a grid pitch of less than 300 μm in at least one spatial direction.

142. The purpose of the multiplicity of interleaved zones is disclosed at page 10 line 33 to page 11 line 12:

“Furthermore, it is advantageous if the first region is subdivided into a multiplicity of first and second 35 zones, and the first and second zones are arranged in accordance with a regular grid having a grid pitch of less than 300 μm in at least one spatial direction. As a result, it is possible to make the first and third optically variable information items visible to the human observer in one and the same surface region of the multilayer body and thus to obtain distinctly recognizable, abrupt changes in the optical appearance in this region. Furthermore, in an embodiment of this type, both the first and the third optically variable information items are disturbed very distinctly even in the case of small register fluctuations, such that even tiny register fluctuations become directly discernible even to the unpracticed observer and a counterfeit or copy of the multilayer body is thus made significantly more difficult.”

143. The Opponent states:

“The embodiment of Figure 11, D9 describes microstructures 92 in a multiplicity of first zones interspersed in a background of the thin film structure 95 provided in the intervening second zones.

At [0020], D9 describes the line screen of the micro-image grid to between 3 microns and 50 microns.”

144. Figure 11 does not disclose multiple zones as defined in the claims. The background forms part of a first zone only (for the same reasons as for D8 and D10).

145. Figure 22 discloses two first zones, but only one second zone. Furthermore the zones in Figure 22 are greater than 300 μm in size. Claim 13 is novel in light of D9.

Claim 13 - Inventive step

146. I am not satisfied that a person skilled in the art would be motivated to modify the disclosure of Figure 22 of D9 to make the zones less than 300 μm in size. Claim 13 is inventive in light of D9.

Claim 14 - Novelty

147. Claim 14 states:

The multilayer body as claimed in claim 1, wherein the one or the plurality of image regions is or are opaque and the background region is transparent, or vice versa.

148. The Opponent states:

“D9 describes the precise metallisation of metallic layers at [0025] and [0115]. The embossed microtext structure (see Figure 24) are ‘approximately transparent apertures in the form of the microtext, (ie. the micro-images). The metallised areas between the transparent micro-images have optically active surface structures such as a diffractive grating or hologram (see [0112]).”

149. I consider the disclosure of apertures in these paragraphs and others (such as paragraph 27) can be read together with Figure 22. Consequently claim 14 lacks novelty in light of D9.

Claim 14 - Inventive step

150. Claim 14 lacks novelty and therefore also lacks inventive step.

Claim 15 - Novelty

151. Claim 15 states:

The multilayer body as claimed in claim 1 or claim 14, wherein the one or the plurality of image regions, on the one hand, and the background region, on the other hand, have different reflection properties.

152. The Opponent states:

“In order to provide a visible image, there must be optical contrast between the image and background when viewed in reflected light. This inherently exists if the images are transparent and the background is not or vice versa.”

153. When the background and microimage are opaque (as is the case in most embodiments of D9) the reflective properties of the microimage and the background must be different. Claim 15 lacks novelty in light of D9.

Claim 15 - Inventive step

154. Claim 15 lacks novelty and therefore also lacks inventive step.

Claim 16 - Novelty

155. Claim 16 states:

The multilayer body as claimed in any of claims 1, 14 or 15, wherein the second layer has a metallic layer, a colored lacquer layer and/or a photoresist layer which is provided in the first region in the image regions and is not provided in the background region, or vice versa.

156. The Opponent states:

“The embodiment shown in Figure 4 of D9 includes a second layer with a metal layer (provided in the form a thin-film structure) and a coloured embossing lacquer 282 as described at [0109]. The de-metallisation process removes the metal from micro-images or the background while the embossing process removes the colour embossing lacquer 282 from the microtext regions or vice versa.”

157. Figure 8 of D9 discloses the feature of areas of transparent background and opaque microimages. However, the background is not uniformly transparent, instead being transparent only in a region (in the shape of the letter “B”). Consequently, claim 16 is novel in light of D9.

Claim 16 - Inventive step

158. D9 does not disclose the background region to be uniformly transparent as required by claim 16. The evidence does not establish that a person skilled in the art would be motivated to remove a second authenticating feature (in the example of Figure 8, the transparent letter “B”), while retaining the transparency. Consequently claim 16 is inventive in light of D9.

Claim 17 - Novelty

159. Claim 17 states:

“The multilayer body as claimed in any of claims 1, 14 to 16, wherein the one or the plurality of image regions and/or the background region are/is covered with an optically variable element, in particular the image regions, on the one hand, and the background region, on the other hand, are covered with different optically variable elements.”

160. The Opponent states:

“In Figure 14, D9 provides the embossed micro-structures 136 in the form of alignment or orientation structures for a layer of liquid crystal (LC) material 132. By changing the polarisation of the micro-structures, the LC material on the micro-structures provides a different optically variability to the LC material in the background areas such that the micro-structures are visible through an integrated polariser (see [0134] to [0139]).”

161. I am not satisfied that the liquid crystal layer disclosed in Figure 14 and paragraphs 134 to 139 can be read together with Figure 22. Claim 17 is novel in light of D9.

Claim 17 - Inventive step

162. There is no evidence to suggest a person skilled would be motivated to combine the features of Figure 14 with the embodiment of Figure 22 of D9. Consequently, claim 17 is inventive in light of D9.

Claim 18 - Novelty

163. Claim 18 is dependent on claim 17. Claim 17 is novel, so it follows that claim 18 is also novel.

Claim 18 - Inventive step

164. Claim 18 states:

The multilayer body as claimed in claim 17, wherein the second layer has a replication lacquer layer having a surface relief impressed into a surface of the replication lacquer layer.

165. Dr Hardwick states:

“Several of the examples shown cover the image regions and the background regions with optically variable elements. In Figure 2a, the microstructures 116 are covered with a thin filmed structure 15 (see [0027]), and similarly, the metal layer 95 in Figure 11 can be substituted for a thin film structure (see [0124]). In Figure 14, the embossed microstructures 136 are covered by LC material layer 132. The LC material on the microstructure 136 is aligned to have a different polarization for viewing through a polarization filter (see [0134]). Hence, claim 18 is found in D9.”

166. There is no evidence to suggest a person skilled would combine the features Figure 11 or Figure 14 with the embodiment of Figure 22 of D9. Consequently, claim 18 is inventive in light of D9.

Claim 19 - Novelty

167. Claim 19 states:

The multilayer body as claimed in any of claims 1, 14 to 18, wherein the one or the plurality of image regions and the background region have different polarization properties.

168. The Opponent states:

“As discussed above in relation to claim 17, the embodiment shown in Figure 14 uses microimages with a polarisation that differs from that of the background (see [0134] to [0139]). Also, [0198] and [0199] discusses options for differing polarization characteristics in the microstructure layer.”

169. I am not satisfied that the teaching of different polarisation regions can be read together with Figure 22. Claim 19 is novel in light of D9.

Claim 19- Inventive step

170. There is no evidence to establish a person skilled would be motivated to combine the features of Figure 14 with the embodiment of Figure 22 of D9. Consequently, claim 19 is inventive in light of D9.

Claim 20 - Novelty

171. Claim 20 states:

The multilayer body as claimed in any of claims 1, 14 to 19, wherein the color, the reflection properties and/or the absorption properties of the second layer are/is varied within the image regions.

172. The Opponent states:

“Figures 18A, 18B and 18C of D9 have micro-image regions 182 of different colour (see [0175]). Similarly, the security devices shown in Figures 15 to 21 are also described as optionally having micro-images of different colours (see [0143]).”

173. I am not satisfied that the teaching of paragraph 175 can be read together with Figure 22. Claim 20 is novel in light of D9.

Claim 20 - Inventive step

174. There is no evidence to establish a person skilled would be motivated to combine the features of paragraph 175 with the embodiment of Figure 22 of D9. Consequently, claim 20 is inventive in light of D9.

Claims 21 and 22 - Novelty

175. Claim 21 states:

The multilayer body as claimed in any of the preceding claims, wherein the micro lens grid is arranged in a manner rotated by 45° relative to the longitudinal axis of the multilayer body.

Claim 22 states:

The multilayer body as claimed in claim 21, wherein the microlens grid is a one-dimensional microlens grid and the focal point lines of the microlenses are arranged in a manner rotated by 45° relative to the longitudinal axis of the multilayer body.

176. The corresponding description states:

“In accordance with one preferred exemplary embodiment of the invention, the microlens grid is arranged in a manner rotated at an angle of 45° with respect to the longitudinal axis of the multilayer body. It has been found that particularly interesting optical effects can thereby be generated particularly when a one dimensional microlens grid is used.”

“This results in the optical appearance 60 illustrated in figure 1d, in the case of which optical appearance foreground elements 61 describe a left-right movement upon the tilting of the multilayer body 1 into the horizontal axis and a left-right movement upon the tilting of the multilayer body 1 about the vertical axis.”

177. Thus the microlenses at an angle of 45° between microimages and microlenses apparently results in ‘ortho-parallactic motion’ as it is known in the art. Furthermore the ortho-parallactic motion is left-right regardless of whether the body is tilted on the horizontal or vertical axis. Although D9 discloses ortho-parallactic movement (paragraph 82), D9 does not disclose the angle of 45° between microimages and microlenses. Thus claim 21 is novel in light of D9.

178. Claim 22 is dependent on claim 21 and it follows that it is also novel in light of D9.

Claims 21 and 22 - Inventive step

179. Dr Hardwick states:

“As previously discussed, it is well known to rotate the lens array relative to the micro image array to achieve the desired moiré magnification. I do not see any particular benefit to rotating the lens by exactly 45 degrees relative to the length of the thread. In any case, the practice of rotating the cylindrical lens array relative to the length of the thread is part of the prior art discussion in D9 at [0009].”

180. The angle of difference between the microlenses and microimages of 45° results in the ortho‑parallactic motion is in one direction regardless of the direction of tilt. This seems advantageous since it provides a distinctive effect unique to that angle (45°) in contrast to the tilt-direction-dependent ortho-parallactic motion at any other angle. Dr Hardwick does not see particular benefit of this effect which suggests that a person skilled in the art would also not immediately recognise the benefit of that angle. Consequently I consider this choice of angle to be non-obvious and thus I consider claims 21 and 22 to be inventive in light of D9.

Claim 23 - Novelty

181. Claim 23 states:

“The multilayer body as claimed in any of the preceding claims, wherein the microimages are in each case applied on a curved surface.”

182. The Opponent states:

“Figures 2A and 2B of D9 show micro-patterns provided on layer 15 on the spherical microstructures 116 (see [0074]).”

183. I am not satisfied that the teaching in figure 2a and 2b can be read together with Figure 22. Claim 23 is novel in light of D9.

Claim 23 - Inventive step

184. The evidence does not establish that a person skilled would be motivated to combine the features Figures 2a and 2b with the embodiment of Figure 22 of D9. Consequently, claim 23 is inventive in light of D9.

Claim 24 - Novelty

185. Claim 24 states:

“The multilayer body as claimed in any of the preceding claims, wherein the microlens grid and/or the microimage grid are/is a two-dimensional microlens grid and/or microimage grid and in each case two or more microlenses and/or microimages succeed one another in a first spatial direction and in a second spatial direction with a respective grid pitch of between 5 μm and 150 μm.”

186. This claim is difficult to parse because of the multiple ‘and/or’ options. I understand the claim to have two requirements. Firstly, the microlenses are two dimensional, i.e. a two dimensional array of spherical lenses. Secondly, the microlenses have a spacing of between 5μm and 150μm.

187. The Opponent states:

“D9 describes micro-lenses 112 and the micro-structures 116 arranged in a two dimensional grid at [0074]. At [0073], a lens pitch within the claim range is described. Similarly, [0020] describes the line screen (the grid pitch) of the micro-lenses and the micro-images as between 3 microns and 50 microns.”

188. I am satisfied that D9 discloses a two dimensional array of lenses of the claimed dimensions. Claim 24 lacks novelty in light of D9.

Claim 24 - Inventive step

189. Claim 24 lacks novelty and therefore also lacks inventive step.

Claim 25 - Novelty

190. Claim 25 states:

The multilayer body as claimed in any of claims 1 to 23, wherein the microlens grid and/or the microimage grid are/is a one-dimensional microlens grid and/or microimage grid and in each case two or more microlenses and/or microimages succeed one another in a first spatial direction with a respective grid pitch of between 5 μm and 300 μm.

191. The Opponent states:

“At [0009], D9 describes cylindrical lens arrays and corresponding image arrays as prior art. The very broad grid pitch defined by the claim encompasses the typical values used for banknote security threats such as those grid pictures described at [0020].”

192. Paragraph 20 of D9 discloses a microimage and microlens spacing of “preferably between approximately 5 μm and 35 μm, particularly preferably between approximately 10 μm and 20 μm”. I consider this to be a disclosure of spacing in the claimed range. Consequently claim 25 lacks novelty in light of D9.

Claim 25 - Inventive step

193. Claim 25 lacks novelty and therefore also lacks inventive step.

Claims 26 and 27 - Novelty

194. Claim 26 states:

The multilayer body as claimed in any of the preceding claims, wherein the grid pitches of the microimage grid and microlens grid differ from one another in each case for adjacent microimages and microlenses by less than 10%, in particular differ from one another by between 0.5 and 5%.

195. Claim 27 states:

The multilayer body as claimed in any of the preceding claims, wherein the microimage grid and the microlens grid are arranged in a manner rotated by between 0.5° and 50° relative to one another.

196. D9 states at paragraph 17:

To achieve the magnification effect, the characteristic depth or the three-dimensional appearance and the motion effects of the present invention, the first and second arrangement are advantageously developed such that the spatial frequencies of the first and second grid are slightly different and the two grids are oriented substantially identically to one another. This can be achieved especially in that the first grid and the second grid of the first or second arrangement exhibit a slightly different line screen. Here, the line screen of the two grids expediently lies in the same magnitude. Alternatively, the first and second grid can exhibit a substantially identical line screen, the grids then being disposed slightly rotated against one another.

197. D9 does not quantify the ‘slight difference’ in spacing between microlenses and microimages. Thus there is no clear and unmistakable disclosure of the difference between the pitch of microlenses and microimages to be less than 10%. Claim 26 is novel in light of D9.

198. D9 does not disclose that the microlenses and microimages are ‘slightly rotated’ with respect to each other. Thus there is no clear and unmistakable disclosure of rotation between microimages and microlenses between 0.5° and 50°. Claim 27 is novel in light of D9.

Claims 26 and 27 - Inventive step

199. Differences in spacing and rotation between a microlens array and microimage array are the two main parameters that can be varied in moiré effect devices (see, for example, exhibit BAH-11 (WO 2005/106601) accompanying Dr Hardwick’s declaration). Dr Hardwick states that the grid pitch range of claim 26 “covers the typical values use for banknote security threads”. I am satisfied that the claimed range of grid pitch and rotation was common general knowledge, and thus would be considered obvious to a person skilled in the art. Consequently claims 26 and 27 lack an inventive step.

Claim 28 - Novelty

200. Claim 28 states:

The multilayer body as claimed in any of the preceding claims, wherein in the first region, the grid pitch of the microlens grid and/ or the grid pitch of the microimage grid and/or the rotation of the microimage grid and/or the rotation of the microlens grid relative to one another are/is varied continuously in accordance with a parameter variation function in at least one spatial direction.

201. The corresponding description states at page 16 lines 15 to 24:

“In accordance with one preferred exemplary embodiment of the invention, in the first region, the grid pitch of the microlens grid, the grid pitch of the microimage grid and/or the rotation of the microimage grid and of the microlens grid relative to one another are/is varied continuously in accordance with a parameter variation function in at least one spatial direction. As a result, the magnification, reduction and transformation effects already mentioned above can be obtained during tilting.”

202. The Opponent states:

“D9 describes non-uniform line screens (ie. lens grids and image grids) numerous times. See for example [0021] and [0170].”

203. Paragraph 21 of D9 states:

“To achieve additional effects, in a variant of the present invention, the first arrangement can also be developed in such a way that it comprises a combination of focusing elements of different size and line screen.”

204. I am not satisfied that this is a disclosure of parameters being continuously varied in one spatial direction. Claim 28 is novel in light of D9.

Claim 28 - Inventive step

205. The purpose of the parameters being varied continuously according to a parameter variation function is to produce ‘animated’ effects such as magnification and reduction as the device is tilted. There is no evidence to suggest that such ‘animated’ effects were common general knowledge or that D9 would be modified by a person skilled in the art, as a matter of routine, to incorporate such effects. Consequently I consider that claim 28 is inventive in light of D9.

Claim 29 - Novelty

206. Claim 29 states:

The multilayer body as claimed in any of the preceding claims, wherein the microimage grid has in the first region at least two microimages which differ from one another.

207. The Opponent states:

“Figures 18A, 18B and 18C show micro-images 182 which may be coloured differently to each other as described in [0175]. The embodiments shown in Figures 1 to 21 also have the option of differently coloured micro-patterns as described in [0144].”

208. D9 states at paragraph 144:

“In addition, the printed micro structures 142 can comprise two or more patterns having different colors and/or in different line screens.”

209. I am satisfied that these teachings are inherently applicable to Figure 22. Claim 29 lacks novelty in light of D9.

Claim 29 - Inventive step

210. Claim 29 lacks novelty and so it follows that claim 29 also lacks inventive step.

Claim 30 - Novelty

211. Claim 30 states:

The multilayer body as claimed in any of the preceding claims, wherein in the second region the form and/or the color of the microimage are/is varied continuously in accordance with a transformation function.

212. The corresponding description states at page 16 lines 26 to 35:

“Furthermore, it is advantageous if the microimage grid has in the first region at least two microimages which differ from one another. It is particularly advantageous in this case if, in the first region, the form and/or the color of the microimages change(s) continuously in accordance with a transformation function and, by way of example, movement effects combined with magnification, reduction and transformation effects are thus brought about during the tilting of the multilayer body.”

213. The Opponent states:

“The embodiment shown in Figure 23 of D9 continuously varies the colour of the micro-images throughout the second region (that extends beneath the transparent carrier substrate 74 as required by claim 5 of the 467 Application). The micro-images are formed from coloured embossing lacquer 272 with different profile heights or depths to provide continuously changing colour saturation. This used to generate half tone images (see [0108]).”

214. Paragraph 108 of D9 states:

“With reference to FIG. 23, a further exemplary embodiment for manufacturing embossed microstructures with the aid of embossing techniques will now be described in greater detail. In this exemplary embodiment, the embossing is likewise done in a colored embossing lacquer 272, e.g. a UV curing lacquer, that is applied across the entire surface of a transparent carrier substrate 74, e.g. a PET film. Here, the microstructures 276 of the microstructure arrangement are formed having different profile heights or depths that achieve a different color saturation and thus a different contrast in accordance with the respective thickness of the lacquer. In this way, it is possible to realize the microstructures also, for example, as halftone images.”

215. I do not consider this to be a disclosure of the form or colour of the microimage being varied in accordance with a transformation function. Claim 30 is novel in light of D9.

Claim 30 - Inventive step

216. D9 discloses making micro images of different colours at paragraph 175. However, this is simpler than forming each microimage with a colour gradient which would require sophisticated printing techniques.

217. I do not see the motivation for the person skilled in the art to modify D9 to include printing the microimages with a colour gradient. Claim 30 is considered inventive in light of D9.

Claim 31 - Novelty

218. Claim 31 states:

“The multilayer body as claimed in any of the preceding claims, wherein in a first partial region of the first region, the grid pitch of the microlens grid, the grid pitch of the microimage grid and/or the rotation of the microimage grid and/or the rotation of the microlens grid with respect to one another differs from the grid pitch of the microlens grid, the grid pitch of the microimage grid and/or the rotation of the microimage grid and/or the rotation of the microlens grid relative to one another in a second partial region of the first region.”

219. The Opponent states:

“D9 describes a lens array with lenses of different size and arranged at different grid pitches at [0021]. This feature is also defined at claim 27.”

220. These teachings are inherently applicable to Figure 22. Claim 31 lacks novelty in light of D9.

Claim 31 - Inventive step

221.  Claim 31 lacks novelty and therefore also lacks inventive step.

Conclusion on novelty and inventive step

222. Claims 1, 4, 5, 6, 8, 9, 12, 14, 15, 24, 25, 29 and 31 lack novelty in light of D9. Claims 1, 3-6, 8, 9, 12, 14, 15, 24-27, 29 and 31 lack an inventive step in light of D9.

Manner of Manufacture

223. The Opponent states:

“Claim 1 defines a collection of elements encompassed by the Common General Knowledge in this field and described in the admitted prior art such as EP 1238373 B1 to Amidror and Hersch. The use of microlens and microimage arrangements to generate moiré magnifications was well known at the priority date as was the use of the optically active surfaces such as diffractive surface structures. Hence the arbitrary selection of well known prior art features, discussed detail in the specification itself, does not constitute patentable subject matter for failure to meet the fundamental threshold of inventiveness on the face of the patent specification (see NV Philips Gloeilampenfabrieken v. Mirabella International Pty Limited 32 IPR 449).”

224. I have found several of the claims lack novelty however I am not of the view that the claims lack newness on the face of the specification itself. There is more than a mere collocation of features in the formation of the distinctive visual effect made possible with the two different optical elements in adjacent zones of a security device.

Conclusion

1. Claims 1, 4, 5, 6, 8, 9, 12, 14, 15, 24, 25, 29 and 31 lack novelty in light of US 2008/0160226. Claims 1, 3-6, 8, 9, 12, 14, 15, 24-27, 29 and 31 lack an inventive step in light of US 2008/0160226.

226. I allow the applicant 60 days from the date of this decision in which to propose suitable amendments to overcome the above findings.

Costs

227. Costs typically follow the event, however a variation of costs can be made to reflect actions of parties during the opposition. In this case the Applicant amended the specification during the opposition. Hypothetically, if the Applicant had made amendments which overcame the grounds of opposition then, for the purposes of costs, the Applicant’s success would have only been considered from the date the amendments were proposed. However since the Applicant has been unsuccessful, the award of costs need not be varied.

228. Costs are awarded against the Applicant, OVD Kinegram AG.

Xavier Gisz
Delegate of the Commissioner of Patents