Innovia Security Pty Ltd v OVD Kinegram AG
[2015] APO 83
•7 December 2015
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Innovia Security Pty Ltd v OVD Kinegram AG [2015] APO 83
Patent Application: 2007211654
Title:Multilayer body with microlens arrangement
Patent Applicant: OVD Kinegram AG
Opponent: Innovia Security Pty Ltd
Delegate: Dr N.R. Madsen
Decision Date: 7 December 2015
Hearing Date: 12 November 2015, in Canberra
Catchwords: PATENTS – optical security device having a micro-lens arrangement – section 59 – opposition to grant of a patent – new grounds and particulars raised in the opponent’s submissions – no basis in statement and grounds and particulars for new grounds and particulars – ground of fair basis taken into account by delegate in accordance with section 60(3) – grounds considered were fair basis, novelty, inventive step, manner of manufacture – certain claims lack fair basis – grounds of opposition in statement of grounds and particulars unsuccessful – opportunity to amend – partial costs awarded against applicant
Representation: Patent applicant: Dr Declan McKeveney of Fisher Adams Kelly
Opponent: Watermark Patent and Trademark Attorneys
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2007211654
Title:Multilayer body with microlens arrangement
Patent Applicant: OVD Kinegram AG
Date of Decision: 7 December 2015
DECISION
None of the grounds of opposition in the statement of grounds and particulars are successful.
I have introduced the ground of fair basis via section 60(3) of the Patents Act. I have found claims 19-22 (and claims 23 to 28 when appended to claim 19) lack fair basis.
I allow the applicant two (2) months from the date of this decision to propose amendments to overcome these deficiencies.
I award partial costs against the applicant.
REASONS FOR DECISION
Background
This matter relates to patent application 2007211654 in the name of OVD Kinegram AG (the applicant), filed on 16 January 2007. The application claims priority from German patent application number DE 102006005000.2 and has a priority date of 1 February 2006.
The application was advertised as accepted on 6 September 2012. A notice of opposition to grant of a patent was filed on 6 December 2012 by Securency International Pty Ltd who later changed their name to Innovia Security Pty Ltd (the opponent). This notice was followed by a statement of grounds and particulars on 6 March 2013. Before the completion of the period provided for the opponent to file evidence in support, the applicant filed a request to amend the specification which was subsequently allowed on 13 November 2014. The opponent filed evidence in support and the applicant filed evidence in answer. There was no evidence in reply filed by the opponent.
The opponent appeared at the hearing by way of written submissions. The applicant was represented in person by their patent attorney.
The request for examination of the patent application was filed on 14 December 2010. As a consequence, substantive amendments of the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 that came into effect on 15 April 2013 do not apply to the present patent application. This includes the amendment to subsection 60(3A) that allows the Commissioner to refuse a patent application if satisfied on the balance of probabilities that a ground of opposition exists. Further to this point I note that the law that applies to the present grounds of opposition is that prior to amendment by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012.
Onus
It is well established under the previous legislation that in proceedings such as these before the Commissioner, the onus rests with the opponent to clearly establish its case in reaching a conclusion on any issue. In F. Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283, Emmett J of the Federal Court found that in opposition proceedings, the Court (and by implication the Commissioner of Patents in her role as a tribunal) should be "clearly satisfied that the patent, if granted, would not be valid". Where questions of fact such as obviousness and existence of invention are involved "the grant should not be refused unless it has been clearly shown that the grounds of opposition have been clearly made out" (Montecatini v Eastman Kodak (1971) 45 ALJR 593).
Grounds of Opposition
The opponent appeared at the hearing by way of written submission pressing the grounds of clarity, fair basis, novelty, inventive step and manner of manufacture. Importantly I note that the ground of fair basis, and the argument presented in relation to clarity at the hearing, does not appear in the statement of grounds and particulars. No request was filed to amend the statement of grounds and particulars to include the new grounds and particulars. At the hearing I placed the applicant on notice that I intended to take into account the ground of fair basis although not properly relied upon by the opponent. Section 60(3) of the Patents Act states:
The Commissioner may, in deciding a case, take into account any ground on which the grant of a standard patent may be opposed, whether relied upon by the opponent or not.
As will be apparent in this decision, I have taken the ground of fair basis into account in view of one particular submission of the opponent regarding dependent claim 19 (and its associated claims). It follows that the grounds for consideration in the present opposition are fair basis, novelty, inventive step and manner of manufacture.
The Evidence
Evidence consists of:
Evidence in support in the form of a declaration by Bruce Alfred Hardwick (BAH) dated 6 December 2013 and 28 supporting exhibits (BAH-1 to BAH-28)
Evidence in support in the form of a declaration by Glenyse Joyce Duke (GJD) dated 6 December 2013 and 2 supporting exhibits (annexes A and B)
Evidence in answer in the form of a declaration by Karel Johan Schell (KS #1) dated 7 August 2014 and 14 supporting exhibits (KS-1 to KS-14)
Evidence in answer in the form of a second declaration by Karel Johan Schell (KS #2) dated 31 March 2015 and 4 supporting exhibits (KS-15 to KS-18)
The Specification
The invention described in the specification relates to optical security elements used in documents such as banknotes, ID cards and passports in order enabling checking of authenticity and to make forgery difficult. A vast range of structures and effects may be present in such security elements including the use of micro-lenses for producing striking and variable images. The invention seeks to expand upon this technology by providing a multilayer body which can be used as an optical security element which is inexpensive to produce and exhibits optical effects which are easily recognisable and at the same time easily remembered (page 2, paragraph 3).
The invention is described as being a multi-layer body for viewing from the front and rear side in transillumination and/or incident illumination. It is provided that the multi-layer body has one or more transparent first layers and a second layer which has a plurality of micro-patterns comprising one or more opaque first partial regions and one or more transparent second partial regions. One of the first layers on its surface remote from the second layer has a surface profile which forms an arrangement of a plurality of first micro-lenses. The thickness of said first layer or said first layer and one or more further first layers arranged between said first layer and the second layer approximately corresponds to the focal length of the first micro-lenses (page 2, paragraph 4). Relevantly to the presently claimed invention the specification describes an advantageous configuration which provides that the micro-patterns form pixels of a grey scale image. Here the dimensions of the pixels are < 300μm (page 5, paragraph 5).
Figures 1, 3a and 3b are useful in describing the invention. Figure 1 shows a diagrammatic view of a multi-layer body according to the invention. Figure 3a shows a front view of a banknote having a window with a multi-layer body of the type depicted in figure 1, while figure 3b shows the rear view of the banknote of Figure 3a.
Figure 1 shows a multi-layer body 1 in the form of a film having a carrier layer 10 which includes spherical micro-lenses 12. The micro-lenses are distributed in a two-dimensional array and are closely arranged with respect to one another. According to the specification the diameter of the lenses is selected to be in the range 10-500μm. The underside of the carrier layer 10 is provided with a metallic layer 14 which is removed in certain regions. The thickness of the carrier layer is arranged such that metallic layer is at the focal plane of the micro-lenses. The metallic layer is covered by an adhesive layer 16.
Micro-patterns 14m formed by region wise removal of the metallic layer are shaped into the metallic layer, and a micro-lens is associated with each micro-pattern. The regions provided with the metallic layer appear as opaque partial regions and the regions in which the metallic layer is removed appear as transparent partial regions. The transparent partial regions are arranged to form a pictorial or image representation while the opaque partial regions form a background. A magnified image is projected to infinity of the micro-patterns by the micro-lenses.
Figures 3a and 3b show a window 30 of a banknote which contains a multi-layer body similar to that described with reference to Figure 1. In these figures, the micro-patterns are arranged such that a number of Euro currency symbols stand out when viewing from the front side of the banknote. Here the micro-lenses magnify the micro-patterns for viewing in the manner discussed with reference to figure 1. Each of the micro-patterns can be considered a pixel of a size that is otherwise unresolvable to the naked human eye. Further, interesting optical effects can be observed from the front side such as the symbols appear to float over, under or in the surface of the bank note and, upon a change of viewing angle the symbols appear to change the position relative to the surface of the banknote (page 19, paragraph 4). To the viewer the euro currency symbols appear transparent.
The effect visible on the front side is in contrast to the effect visible on the rear side. On the rear side, figure 3b shows a grey scale image 36 which is formed by the micro-patterns/pixels 14m. Here, the varying levels of removal of metallic layer 14 within each pixel provides for the ability to create pixels of different brightness on a grey scale which can combine when viewing with the naked eye to produce an image. Because the detail within each pixel cannot be resolved with the naked eye, a viewer on the rear side cannot “see” the Euro currency symbols but instead simply sees an intensity value from each pixel which contributes to a visible macroscopic image.
The claims
The specification as amended during the opposition proceedings ends in 28 claims whereby claim 1 is independent as follows:
A multi-layer body for viewing from the front and rear side in transillumination and/or incident illumination,
wherein the multi-layer body has one or more transparent first layers and a second layer which has a plurality of micro-patterns comprising one or more opaque first partial regions and one or more transparent second partial regions, wherein in the region of the second partial regions, the multi-layer body is transparent throughout, one of the first layers on its surface remote from the second layer has a surface profile which forms an arrangement of a plurality of first micro-lenses, wherein the micro-lenses are of a diameter of less than 50μm and a respective micro-pattern pixel of the plurality of micro-patterns is selected by a respective micro-lens of the plurality of first micro-lenses, and the thickness of said first layer or said first layer and one or more further first layers arranged between said first layer and the second layer approximately corresponds to the focal length of the first micro-lenses and
wherein the micro-patterns form grey scale image pixels of a grey scale image, wherein the dimensions of the grey scale image pixels are < 300μm, such that the multi-layer body when viewed from the side of the second layer, that is remote from the micro-lenses, appears as an opaque surface which shows information in the manner of a grey scale image.
Claim Construction
While the rules of construction for an Australian patent specification are well summarized in Decor Corp v Dart Industries 13 IPR 385, 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."
I also note that the requirement that the claims are clear is understood to be satisfied if a person could ascertain "whether or not what he proposes to do falls within the ambit of the claim" (Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59).
The key feature for consideration of claim 1 in the present matter is that in respect of the grey scale image pixels, and the formation of a grey scale image as part of apparently opaque surface as follows:
…wherein the micro-patterns form grey scale image pixels of a grey scale image, wherein the dimensions of the grey scale image pixels are < 300μm, such that the multi-layer body when viewed from the side of the second layer, that is remote from the micro-lenses, appears as an opaque surface which shows information in the manner of a grey scale image.
The opponent raised a point in regard to the construction of claim 1 in suggesting that there is the possibility that the identified relevant feature may be construed to be something other than a “normal grey-scale image, not synthetically magnified”. While this may be what is depicted as an embodiment (and as I have described above in explaining the nature of the invention) it is necessary to carefully consider the words of the feature to understand the scope of claim 1.
Firstly, what is clear from claim 1 is that individual micro-pattern elements (for example depicted in the figures as 14m) of a plurality of micro-patterns are identified as micro-pattern pixels. A single micro-pattern pixel is selected by a respective micro-lens of the plurality of first micro-lenses. In this regard, a pixel of the micro-pattern is associated with a micro-lens by way of the collocation of these elements and further by way of the distance between the two elements being equal to the focal length of the micro-lenses. The effect of this arrangement is to magnify each individual micro-pattern pixel such that its detail is resolvable to a viewer on a first side (the side of the micro-lenses).
The identified feature relating to the grey-scale image by its nature produces an optical effect on the other side (opposite side to the micro-lenses). Here the same micro-patterns form grey scale image pixels of a grey scale image wherein the dimensions of the [pixels] are <300µm. In this regard the micro-patterns serve to provide two optical effects. When the multi-layer body is viewed from the lens side, a magnified image of the micro-patterns (sometimes referred to as a moiré effect) is seen involving opaque and transparent regions. When viewed from the opposite side, the claim describes visibility of a grey-scale image whereby the multi-layer body appears as an opaque surface. This means that the viewer is now not able to resolve opaque and transparent regions of the micro-patterns and instead sees a combination of grey-scale pixels. The viewer interprets the grey scale-pixels as intensity values which combine to produce a macroscopic image that appears opaque.
Importantly, the construction of the relevant feature does not involve consideration of whether the grey-image is “normal” or “not synthetically magnified”. In this regard the claim does not preclude the inclusion of lenses on the second side of the device provided the effect of an apparently opaque grey-scale image is visible to the viewer.
Fair Basis
The requirement that the claims be fairly based on the description is a requirement of consistency of the claims with the description or, more particularly, with the invention described. Subtests 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].
The opponent provided written submission in regard to a lack of fair basis centred upon a number of claims. Submissions provided in regard to claim 19 (and its associated dependent claims) warrant consideration in accordance with section 60(3). I discussed the ground of fair basis in relation to claim 19 with the applicant at the hearing and their submissions were provided. Claim 19 reads as follows:
A multi-layer body according to any one of the preceding claims wherein the second layer, on the side remote from the first layer with the first micro-lenses, is provided with one or more transparent third layers which on the surface thereof that is remote from the second layer has a surface profile which forms an arrangement of a plurality of second micro-lenses, and the thickness of said third layer or said third layer and arranged between said third layer and the second layer one or more further third layers approximately corresponds to the focal length of the second micro-lenses.
The embodiment that claim 19 represents is well depicted by figure 9 and the associated discussion in the specification. Figure 9 is reproduced below:
Figure 9 shows an embodiment that differs from that described earlier in this decision in that a second set of micro-lenses (92) is arranged on the rear side of the multi-layer body. The second set of micro-lenses (92) is similar in geometry to the first set (12) and as is the case with the first carrier layer (10), the micro-lens layer (90) is of a thickness such that the micro-patterns (14m’) are located at the focal plane of the second set of micro-lenses. In the embodiment the second set of micro-lenses has a shorter focal length than the first micro-lenses meaning the micro-lens layer (90) is necessarily thinner than the first carrier layer. The specification describes the operation of the system involving two sets of lenses at page 22 line 28 to page 23 line 7:
By virtue of the different parameters of the micro-lenses 12 and 92, in particular the focal length and the diameter, a different visual impression is produced by the carrier layer 10 and the micro-lens layer 90 respectively. A viewer now sees images which appear transparent and which are magnified to different extents, of different regions of the metallic layer 14, which seem to float at differing heights above the multi-layer body and which change their position upon a change in the viewing angle. That effect is produced not directly by the focal lengths of the micro-lenses but by the different raster widths of the micro-images and micro-lenses. In the embodiment shown in Figure 9, this involves different micro-patterns 14m and 14m' which are respectively associated with the micro-lenses 12 and 92 respectively. The micro-patterns 14m and 14m' are arranged in a raster.
The discussion in relation to the operation of this embodiment is entirely directed towards images which appear transparent and magnified to different extents on either side of the multi-layer body. There is no discussion in any part of the body of the specification to suggest that in using two sets of lenses, i.e one on the front and one on the rear side, one might achieve an effect of an apparently opaque grey-scale image on the rear side. It is this effect of opacity in a grey-scale image that is required by claim 1.
The applicant agreed at the hearing that there was essentially an inconsistency between the described embodiments (those depicted in figures 3 and 9) that was not resolved by the body of the specification. In this sense there is no real and reasonably clear disclosure of the key effect of claim 1 (that being an apparently opaque grey-scale image visible from the rear side) being achieved using the two sets of lenses on opposite sides of the multi-layer body as claimed in claim 19. The only disclosure of the effects achievable using the features of claim 19 as described by the embodiment of figure 9 relate to magnified images appearing of the micro-patterns on front and rear sides of the multi-layer body, wherein the magnification is to differing degrees and the images appear to have both transparent and opaque regions.
Hence claims 19-22 (and claims 23 to 28 when appended to claim 19) lack fair basis.
Novelty
For the purposes subsection 7(1) of the Patents Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any one of the items of prior art information.
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; 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; 16 IPR 545 at 549). To meet this requirement, the prior art must contain “clear and unmistakable directions to do what the patentee claims to have invented” (The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 at 486).
Regarding the requirement of a clear and unmistakable direction, Australian courts have often cited with approval the words of the UK Court of Appeal in The General Tire case which states at pages 485-486:
"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 be as likely to be carried out in a way that would not do so, the patentee's claim will not be anticipated…
To anticipate the patentee's claim, the prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented ... A signpost, however clear, upon the road to the patentee's invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee…”
I also note that an alleged anticipation need not explicitly disclose all of the essential features of the claimed invention. In this regard, a disclosure may be implicit as discussed in Bristol-Myers Squibb Company v FH Faulding & Co Ltd [2000] FCA 316; 46 IPR 553 at 576:
“What all authorities contemplate, in our view, is that a prior publication, if it is to destroy novelty, must give a direction or make a recommendation or suggestion which will result, if the skilled reader follows it, in the claimed invention. A direction, recommendation or suggestion may often, of course, be implicit in what is described and commonly the only question may be whether the publication describes with sufficient clarity the claimed invention or, in the case of a combination, each integer of it.”
The following documents provided by the opponent as exhibits in evidence in support were pressed by the opponent in its submissions as depriving the claimed invention of novelty:
· D1: WO 2005/106601 A2 (De La Rue International Limited) 10 November 2005
· D2: WO 2005/052650 A2 (Nanoventions, Inc.) 9 June 2005
Document D1
According to the summary of the invention on pages 5 and 6, document D1 is directed towards a security device having a substrate and an array of micro-lenses on one side and corresponding arrays of micro-images on the other side. The micro-images are located at a distance from the micro-lenses equal to the focal length of the lenses. The substrate is transparent allowing light to reach the micro-images. Each micro-image is defined by an anti-reflection structure on the substrate formed by a periodic array of structural elements. Light passing through the substrate and impinging on the micro-images is reflected to different extent to light which does not impinge on the anti-reflective features thus creating a contrast effect which can be viewed through the micro-lenses.
In reviewing the disclosure of D1 it is clear that while D1 discloses a majority of the features of claim 1 to the agreement of the parties, there is dispute as to whether the document discloses the feature relating to the grey-scale image identified above at paragraph 18. I have reviewed the document and agree with the parties as to the relevant point of contention. I will focus upon the relevant disclosure of D1 to determine whether there is a disclosure present as required by claim 1 of the formation of a grey-scale image.
The opponent points to pages 27 and 28 and associated figures as providing disclosure of the feature of a grey-scale image viewable from a second side. I first turn to figure 23 which provides a transmissive device provided in a window of a security document in accordance with the broad principle of the invention of D1:
In this device, anti-reflection structures 146 cover an entire surface within the transparent region 142 of a document. Selective thin layer metallisation is performed in specific locations 5. The metallisation provides contrast to the device in that the areas covered by thin metal appear dark. Thus, a micro-image array is formed by the contrast between regions 5 and uncoated anti-reflection structures. When viewing the device from the lens side of the document, magnified micro-images will appear black against a transparent background. Significantly the array is only clearly discernible when viewed through the micro-lens array 3. (page 27 lines 9-16)
The document D1 also discusses the possibility of including such a transmissive device in a paper banknote in the form of an impermeable strip. Here an aperture is formed in the banknote so that it is possible to view both sides of the transmissive device in a particular region (page 27 lines 26-30). In such a configuration an upper surface (such as the lens side of the device depicted in figure 23) is viewed such that a magnified image will be viewed in transmission and reflection on this side. From the reverse side of the document the device will be visible through the aperture but its image detail not very clearly discernible because the micro-images are not being viewed directly through the micro-lens array (page 28 lines 1-5). On the basis of this disclosure the opponent submits that an image is viewable from the reverse side, albeit not as clearly as when viewed through the lens array.
What is clear from the above identified disclosure is that a magnified image of micro-patterns is viewable from a first side of the device. In regard to an effect visible on the opposite side of the device remote from the micro-lenses the document says that information is not very clearly discernible because the micro-images are not being viewed through the lenses. To me this falls short of a disclosure of the micro-images forming pixels of a grey-scale image with an apparently opaque appearance as defined by claim 1. I find no clear direction that the information is resolvable to decipher any particular image and no teaching that the information visible on the rear side comprises an image made up of pixels defined by the micro-images. There is also no disclosure as to whether the effect visible from the reverse side of the embodiment described in D1 shows any degree of transparency or is completely opaque. In this regard there is no suggestion of grey-scale information as claimed.
It follows that there is no disclosure in document D1 of the feature related to a grey-scale image wherein the micro-patterns form grey scale image pixels of the grey scale image, wherein the dimensions of the grey scale image pixels are < 300μm, such that the multi-layer body when viewed from the side of the second layer, that is remote from the micro-lenses, appears as an opaque surface which shows information in the manner of a grey-scale image.
Therefore all claims are novel in view of document D1.
Document D2
A similar point of contention remains with D2 as was the case with D1. Broadly, figure 1a and page 14 of Document D2 discloses a micro-optic system whereby micro-lenses arranged in an array focus the images of icon elements and project them towards a viewer. Figure 1a shows a similar structure to the claimed invention whereby illumination and viewing can be via reflection or transmission. Icon elements form a periodic array having similar period and dimensionality as the lens array. A spacing layer between the lens array and icon elements is equal to the focal length of the lenses.
In relation to the key feature of the grey-scale image the opponent points to embodiments described on pages 38 to 41 and in figures 15c-d and 16a-f. For the purposes of this decision the disclosure in these figures is similar and I need only refer to figures 15c and 16a-c to adequately describe the relevant disclosure of D2. These figures are reproduced respectively below:
Figure 15c (left image) shows a two sided device with two sets of micro-lenses 292 and 302. Each set of micro-lenses is arranged to view icons in a respective icon layer. In this example, a pigment layer 298 prevents lenses from seeing icons on the opposing side of the device. A similar embodiment is also described wherein there is no pigment layer present and lenses are arranged to focus on the other set of icons. In this regard, instead of focusing on icons in layer 296, lenses 292 focus upon icons in layer 300. Similarly, icons 296 are viewed by lenses 302. Figures 16a-c then describe different icon element patterns that may be present in the icon layer.
Figures 16a-c are cross sections including part of an optical separator 309 (the lenses have been removed from the depiction of the device) and a transparent micro-structured icon layer 311. Icon elements in the icon layer 313, 315 and 317 are filled with a pigmented or dyed material. The underside of the icon layer may be sealed with a transparent material 321. As seen in the figures the micro-structured icon elements, one of which is a plan view of 315 that is a depiction of a face 339, are formed by variations in optical density. Here the icon elements create grey-scale or tonal synthetically magnified images in a way that enables an unlimited variety of grey-scale images to be created (page 39, lines 11-14). On the basis of this disclosure the opponent submits that the key feature related to the grey-scale image of claim 1 is disclosed.
As was the case with document D1 there is no disclosure of the feature as claimed. In this regard, while each individual micro-icon of figures 16a-c forms a micro-scale grey-scale image, the claim requires these micro-icons or “micro-patterns” to themselves form pixels of a grey-scale image. There is no disclosure of these icons or patterns of D2 combining to form such an image. Furthermore, there is no disclosure of a view from a second side constituting an appearance of opacity. The disclosure relating to a device having transparent regions throughout as required by claim 1 is directed towards regions of varying tone/grey level in combination with regions that are transparent when viewed through micro-lenses. The disclosure in relation to the viewing of the icon images of the figures appears to be entirely in relation to using micro-lenses where one could expect to see opaque and transparent regions.
It follows that there is no disclosure in document D2 of the feature related to a grey-scale image wherein the micro-patterns form grey scale image pixels of the grey scale image as required by the claims. Therefore all claims are novel in view of document D2.
Inventive Step
The test for obviousness was provided by Justice Aickin in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12 at [45]; 148 CLR 262 at 286 as follows:
“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 High Court in Aktiebolaget Hässle v Alphapharm Pty Ltd [2002] HCA 59 at [51]- [53]; 212 CLR 411 at [51]-[53] approved this approach, in addition to that taken in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157 at 187 in which Graham J had posed the question:
“Would the notional research group at the relevant date in all the circumstances directly be led as a matter of course to try [the claimed invention] in the expectation that it might well produce a useful [desired result]?”
Where the invention lies in a combination of features, the question is whether the combination, not each individual feature, is obvious when compared to the prior art base (Alphapharm [2002] HCA 59 at [41]; 212 CLR 411 at [41]; Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9 at [116]; (1980) 144 CLR 253 at 293).
The usual approach to determining inventive step is the problem-solution approach. Once the problem has been formulated and the common general knowledge and the prior art base has been determined, the question of whether the claimed solution is obvious must be addressed.
In determining the problem or ‘starting point’ for considering inventive step, I am mindful of the words of the majority of the Full Court in AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99 at [202]-[203] as follows:
“If the problem addressed by a patent specification is itself common general knowledge, or if knowledge of the problem is s 7(3) information, then such knowledge or information will be attributed to the hypothetical person skilled in the art for the purpose of assessing obviousness. But if the problem cannot be attributed to the hypothetical person skilled in the art in either of these ways then it is not permissible to attribute a knowledge of the problem on the basis of the inventor’s “starting point” such as might be gleaned from a reading of the complete specification as a whole.”
In other words, the Full Court has stated that when formulating the problem it is not permissible to incorporate information that is not available to the person skilled in the art as either common general knowledge or information available under section 7(3).
The problem
As I have mentioned earlier, the invention relates to optical security elements and in particular the use of micro-lenses for producing striking and variable images. As identified in the specification the invention seeks to expand upon this technology by providing a multilayer body which can be used as an optical security element which is inexpensive to produce and exhibits optical effects which are easily recognisable and at the same easily remembered (page 2, paragraph 3).
To me it is clear that the claims are directed to the problem of providing an alternative multilayer optical security element involving micro-lenses that is striking and inexpensive to produce. Given the problem is so broadly defined I see no basis to conclude that an aspect of this problem is not either common general knowledge or s7(3) material. In this regard the prior art provides for striking effects, and I consider it reasonable to infer that a person skilled in the art would be well aware of relatively inexpensive options for producing optical effects using micro-lenses.
The hypothetical person skilled in the art
In Root Quality v Root Control Technologies Pty Ltd (2000) 49 IPR 225 at [71], Finklestein J held that the skilled addressee would have the following characteristics:
“In Catnic Lord Diplock said (at 242) that skilled addressees are “those likely to have a practical interest in the subject matter of [the] invention”. A variety of people may have that interest. There are those who might wish to make or construct the invention, those who may wish to compound the invention and those who may wish to use the invention.”
In a broad sense the skilled addressee would be a person with a practical interest in the design or manufacture of multilayer optical security elements involving micro-lenses. It is also useful to more clearly characterise what type of people this would include. In this sense, the skilled addressee can be equated with a team of people that includes: a scientist or technician involved in the research or design of such security elements; a security document/counterfeiting expert involved in the analysis/testing of such elements; and a manufacturer of such security elements.
I have reviewed the backgrounds of the experts as provided in their evidence and it is clear that Mr Hardwick and Mr Schell may be considered skilled addressees. Mr Hardwick was a Technical Development Manager who led a team responsible for polymer banknote production, and is now a consultant to central banks and security printers advising on aspects of banknote scientific research and counterfeit deterrence (BAH at [4]-[6]). Mr Schell is experienced in the field of security documents in that he has been a Director responsible for the technology, development and production of security documents and following this has spent many years as a consultant in regard to the production of currency and passports (KS #1 exhibits KS1 and KS2). Both of these experts represent a person who would have a clear practical interest in the relevant problem at the priority date.
The applicant submitted that a number of factors contribute to a necessity to give the evidence of Mr Hardwick minimal weight. These include the fact that he is an inventor of a number of patents and the fact that he has given evidence in multiple patent opposition cases for the opponent. On this basis the applicant questions whether the evidence of the opponent can be independent and whether Mr Hardwick can be considered a non-inventive skilled worker.
To the extent that I prefer the evidence of one of the experts I will discuss this where necessary.
The prior art base (ascertain, understand and regard as relevant)
The opponent relies on documents D1 and D2 as section 7(3) material for the purposes of inventive step. Relevantly, the concept of ascertaining documents in the context of a diligent searcher seeking solutions to a problem is well summarised in Rohm and Haas Company v Nippon Kayaku Kabushiki Kaisha and Sankyo Company, Limited[1997] APO 40 where the Delegate of the Commissioner stated with reference to patent documents:
"A document would be ascertained if it was published in such a manner or form that it could reasonably have been expected to be found by a person skilled in the art. A patent document dealing with the same technical issues would prima facie have been ascertained by a person skilled in the art.”
Both documents D1 and D2 are directed towards optical security elements involving micro-lenses with striking effects. In this regard they deal with the similar technical issues as the present invention. Their abstracts contain particularly relevant keywords such as “microlenses”, “lenses”, “microimages”, “security device”, “substrate” and “film”. I also note that Mr Hardwick, in his declaration provided as evidence in support (BAH), discusses the practice in the field of conducting patent searches (at [31]-[33]). Thus I conclude it is clear that the documents could have been ascertained. I have no doubt that the documents would have been understood by a person skilled in the art. I am also of the opinion that the documents could reasonably have been regarded as relevant. They are addressed to a similar problems related to the search for alternative optical security devices involving micro-lenses.
Hence, the documents D1 and D2 are part of the prior art base for consideration of inventive step.
Was the invention obvious?
Common general knowledge
In ICI Chemicals & Polymers Ltd v Lubrizol Corp45 IPR 577 Emmett J stated:
"The common general knowledge is the technical background to the hypothetical skilled worker in the relevant art. It is not limited to material which might be memorised and retained at the front of the skilled workers mind but also includes material in the field in which he is working which he knows exists and to which he would refer as a matter of course. It might, for example, include:
·standard texts and handbooks;
·standard English dictionaries;
·technical dictionaries relevant to the field;
·magazines and other publications specific to the field."
The opponent provided submissions as to what should be considered common general knowledge in the art. In this characterisation of the state of the art the opponent included a number of patent documents and also conference papers. Importantly, there is no evidence to suggest that any of these documents alone is more than a document that may have been known to the expert Mr Hardwick. To form part of the common general knowledge the documentary material must be something to which the skilled worker would refer to as a matter of course. It follows that these patent and conference papers cannot be considered such information. The common general knowledge in the art of optical security devices as established by the evidence can be formulated as follows:
· The use of a moiré magnifier as an optically variable device, as well as the principles of moiré magnification (BAH at [20], BAH-2, BAH-7, BAH-10,BAH-11, BAH-12, BAH-22, BAH-24)
· The extract pages 159-161 of the text book Optical Document Security by Rudolf L. van Renesse, 3rd edition published 2005 (exhibit BAH-24). These pages discuss that moiré devices may exhibit halftone images. They discuss the use of basic screens incorporating halftone images made up of modulated pixels and explain the observation of moiré effects through pin-hole, pin-speck or two dimensional lens array overlay screens. The document considers viewing of moiré effects and a halftone macroscopic image from a single side of the device.
· Lens arrays with lenses of diameter and focal length of the order of 10 to 20 microns (BAH at [67])
· Halftone or grey-scale images with pixels smaller than the spatial resolution of the human eye (To me this is the basic understanding of a grey-scale image)
· Polymer and polymer-paper hybrid banknotes (BAH at [29] and [30])
· Security threads partially embedded within banknotes and partially exposed in windows (BAH at [28])
The evidence of the opponent does not discuss the feature of the grey-scale image, and instead simply provides evidence as to the obviousness of the use solely of moiré arrangements. As has already been discussed claim 1 is directed towards the combined effects made possible by the micro-patterns. Firstly, a micro-pattern pixel is individually associated with a micro-lens. This produces an effect visible to a viewer on a first side of a device being magnification of micro-patterns. Secondly, these micro-patterns form grey-scale pixels of a grey-scale image that is visible as a second effect on a side remote to the micro-lenses. This second viewable effect appears opaque to a viewer.
There is no evidence as to how the person skilled in the art might modify that which is common general knowledge to arrive at the claimed invention. There is no teaching in the common general knowledge that would direct a skilled person to provide a moiré type magnification effect on a first side of a device (using micro-lenses in register with micro-patterns) and an opaque grey-scale image on the other side. The common general knowledge instead teaches these effects as existing as unrelated features of devices or as features that might be visible from only one side of a device. The invention clearly lies in the use of the micro-patterns to produce the different effects on either side of a device.
Therefore, the claimed invention involves an inventive step in view of common general knowledge.
Documents D1 and D2
The opponent simply submits that:
“…the skilled worker, appraised (sic) of D1 and/or D2, would derive the OVD of claim 1 without any exercise of ingenuity. None of the elements in claim 1 are combined in a manner which would be considered unconventional or contrary to standard practice.”
As is the case with common general knowledge this submission fails. Documents D1 and D2 only make disclosure of a magnification effect of micro-patterns being visible through lenses. There is no disclosure in either of these documents of the formation of a grey-scale image from these micro-patterns such that an apparent opaque surface is viewed as defined in claim 1. There is nothing disclosed in the documents or demonstrated by the opponent to be routine in the art that would directly lead the person skilled in the art to the invention claimed whereby the combined effects are achieved using only the micro-patterns.
Therefore, the claimed invention involves an inventive step in view of document D1 and/or D2.
Manner of Manufacture
Section 18(1)(a) requires that an invention must be a manner of manufacture within the meaning of section 6 of the Statute of Monopolies. Whether an invention is a manner of manufacture is assessed by asking whether the claimed invention lacks the necessary quality of inventiveness on the face of the specification (NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd [1995] HCA 15 at [9]; [1995] HCA 15; (1995) 183 CLR 655 at 655). I also make reference to British Celanese Ltd. v Courtaulds Ltd. (1935) 52 RPC 171 at pages 193-194, where it was said:
"It is accepted as sound law that a mere placing side by side of old integers so that each performs its own proper function independently of any of the others is not a patentable combination, but that where the old integers when placed together have some working inter-relation producing a new or improved result then there is patentable subject-matter in the idea of the working inter-relation brought about by the collocation of the integers."
The opponent has essentially argued that the claimed invention defines a collection of elements that are known and that the features of claim 1 fail to result in a new working interrelationship. They submitted that:
“The use of microlens and microimage arrangements to generate moiré magnifications was well known at the priority date as was the use of the microimage arrangements as pixels in a grey-scale image. Hence the arbitrary selection of well-known prior art features, discussed in 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 specification.”
In my view the allegation that the invention is directed to a mere collocation is without foundation. The claimed invention plainly meets the definition of a "patentable combination" as there is a functional relationship between claimed features in defining an invention being a multilayer body having an imagining effect visible on one side through lenses, wherein on a second side a grey scale image is visible. I also note there is no reference in the specification that would indicate that features claimed relating to these two effects being used in combination and achieved using the same micro-patterns is known or obvious.
Consequently, I am satisfied that the claimed invention constitutes a manner of manufacture.
Conclusion
None of the grounds in the statement of grounds and particulars before me for consideration are successful. While not raised in the statement of grounds and particulars, I have given consideration to the ground of fair basis in accordance with section 60(3) of the Patents Act. This ground was raised in the opponent’s written submissions before the hearing. I have found claims 19-22 (and claims 23 to 28 when appended to claim 19) lack fair basis. As the matters can be overcome by amendment I will allow a period of two months for the applicant to propose amendments.
Costs
The opponent noted that the applicant filed amendments that constitute a tacit admission that the accepted application was not valid. On this basis the opponent seeks costs at least up to and including the filing of evidence in support.
The applicant argued that if amendment is required but the opposition is otherwise unsuccessful costs should be awarded to the applicant or no award of costs should be made. The applicant also argued that the opponent had thrown away their right to costs up to evidence in support when they decided to continue with the opposition after amendment. The applicant added that if the opponent relies upon a case that goes beyond the statement of grounds and particulars then they should not be entitled to an award of costs.
It appears to me that the amendment to the claims after acceptance and prior to the filing of evidence in support provides novelty and inventiveness to the claims. While I have found the application invalid on a minor issue of fair basis, following the amendment the applicant has been successful in defending the application to the extent that was presented to them in the statement of grounds and particulars. However, I note that the fair basis issue has arisen as a result of the amendment and while it have been more appropriate for the opponent to raise the issue when the amendments were being considered, the opponent was justified in continuing with the opposition.
In the present circumstances I consider it appropriate to award costs against the applicant up to and including evidence in support. The opponent induced a necessary amendment and was justified in continuing with the opposition. Beyond evidence in support I consider that there should be no award of costs as the fair basis issue should have been raised by the opponent at the stage of consideration of amendments.
Dr N.R. Madsen
Delegate of the Commissioner of Patents
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