Innovia Security Pty Ltd v OVD Kinegram AG
[2015] APO 46
•6 August 2015
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Innovia Security Pty Ltd v OVD Kinegram AG [2015] APO 46
Patent Application: 2008253266
Title:Multi-layer body
Patent Applicant: OVD Kinegram AG
Opponent: Innovia Security Pty Ltd
Delegate: Ranganath Subbarayan
Decision Date: 6 August 2015
Hearing Date: 31 July 2014, in Melbourne
Catchwords: PATENTS – security device comprising volume holograms – section 59 – opposition to grant of a patent – claim construction – grounds of novelty, inventive step, sufficiency, clarity and fair basis – opposition unsuccessful – costs awarded against opponent
Representation: Patent applicant: Mr Mark Horsburgh and Mr Jon Wright of Fisher Adams Kelly Pty Ltd
Opponent:Mr J Roger Green, Mr Jeremy Robinson and Mr Nigel Pereira of Watermark Patent and Trade Marks Attorneys
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2008253266
Title:Multi-layer body
Patent Applicant: OVD Kinegram AG
Date of Decision: 6 August 2015
DECISION
None of the grounds of the opposition have been made out. The claimed invention is novel, inventive, fully described, clear and fairly based. I direct that the application proceed to grant subject to any appeal. I awards costs according to schedule 8 against the opponent Innovia Security Pty Ltd.
REASONS FOR DECISION
BACKGROUND
Patent application 2008253266 in the name of OVD Kinegram AG was filed on 16 May 2008 as a PCT application (PCT/EP2008/003949) and claims priority from priority application DE 102007023560.9 filed on 21 May 2007. It was advertised as accepted on 17 January 2013. Innovia Security Pty Ltd filed a Notice of Opposition to the grant of the patent under s59 of the Patents Act on 17 April 2013.
The evidentiary stages were completed on 22 April 2014 and the matter was heard on 31 July 2014. Prior to the hearing on 2 July 2014, the opponent filed two new prior art documents which they submitted were highly relevant to the opposition and requested the Commissioner to exercise her discretion under regulation 5.23 to bring these documents into the opposition proceedings. Based on the submissions from the opponent at the hearing, I formed the view that these documents could be relevant to the grounds of novelty and inventive step and decided to bring these two new documents into the proceedings. Both parties then filed evidence in relation to these new documents. A further hearing in relation to these new prior art documents was conducted through written submissions that were completed on 22 April 2015.
GROUNDS OF OPPOSITION
The application has been opposed under the grounds of novelty, inventive step, manner of manufacture, sufficiency, defining the invention, clarity and fair basis. However at the hearing, the opponent did not make submissions on or press the grounds of manner of manufacture and defining the invention. I therefore do not intend to address these two grounds in my decision.
EVIDENCE
Evidence in support filed by the opponent comprises the following:
- Declaration by David Julian Pizzanelli dated 16 October 2013 with exhibits DJP-1 to DJP-20 (Pizzanelli #1).
- Declaration by David Julian Pizzanelli dated 17 October 2014 with exhibits DJP-21 to DJP-22 (Pizzanelli #2).
Evidence in answer filed by the applicant comprises the following:
- Declaration by Karel Johan Schell dated 7 January 2014 with exhibits KS-1 to KS-4 (Schell #1).
- Declaration by Karel Johan Schell dated 21 January 2014 with exhibits KS-5 to KS-9 (Schell #2).
- Declaration by Dr Wayne Robert Tompkin dated 12 February 2014 with exhibits WRT-1 to WRT-3 (Tompkin #1).
- Declaration by Dr Wayne Robert Tompkin dated 13 February 2014 with exhibits WRT-4 to WRT-5 (Tompkin #2).
- Declaration by Karel Johan Schell dated 7 January 2015 (Schell #3).
Evidence in reply filed by the opponent comprises the following:
- Declaration by Bruce Alfred Hardwick dated 22 April 2014 with exhibits BAH-1 to BAH-2 (Hardwick #1).
SPECIFICATION
The specification states that the invention relates to a multi-layered body with optical-action elements for use in security documents such as banknotes. It starts with a brief description of three prior art security documents each of which has certain optical elements that enable a user to verify the authenticity of the document. For example DE 4334847 is stated to have a window-like opening that is closed by a transparent film that is provided with a security feature such as a diffraction structure that produces a refraction and/or diffraction optical effect. The transparent film enables the optical security feature to be viewed in a normal illumination mode in which the security document is illuminated from front and also in a transillumination mode in which the security document is illuminated from behind the document.
The specification does not identify any specific deficiencies with these prior art but merely states that the object of the present invention is to provide a multi-layered body having an improved optical-action element for use in security documents. It includes a consistory clause that mirrors claim 1 which reads as follows (with added integer numbers as identified by the opponent):
1.(1.1) A multi-layer body, in particular a security document, having a carrier substrate and a transparent layer at least partially arranged in a window or in a transparent region of the carrier substrate,
(1.2) wherein the transparent layer has at least a first subregion and a second subregion with a varying refractive index, which are arranged in mutually juxtaposed relationship in the layer plane defined by the transparent layer, (1.3) wherein the at least first subregion and the at least second subregion are at least partially arranged in the window or in the transparent region of the carrier substrate,
(1.4) each of the subregions has a plurality of periodically arranged nodes which form an optical-action element and which are formed by a refractive index variation and which are arranged in substantially mutually parallel planes, and
(1.5) the planes in the at least first subregion are not parallel to the planes in the at least second subregion, and (1.6) at least in one of the subregions the planes extend neither parallel nor perpendicular to the layer plane (1.7) so that both light incident on a front side and on a rear side of the multi-layer body is diffracted by the optical-action elements and (1.8) the elements produce an optical effect which is different in a front view and in a rear view in an incident light mode.
The specification states that the claimed invention is distinguished by particular optical characteristics. Firstly the “arrangement of the optical-action elements in a window or in a transparent region of the carrier substrate provides that illumination of the optical-action elements can be from both sides of the security document”. Secondly “arranging at least two differently formed subregions in the window makes it possible to produce non-transparent reflecting images in a transparent window which is particularly easily remembered by the viewer”.
When the document is viewed from the front side in incident light mode in which the light is on the same side as the viewer, the viewer sees a first image in the transparent window and when the document is viewed from the rear side in incident light mode the viewer sees a second different image in the transparent window. This is best seen in figures 7b and 7c that are reproduced below.
These figures show a security document 7 with a carrier substrate 750 with a window 70 and a transparent layer 720 covering the window. The transparent layer is made of a photopolymer and has an optical element 71 in the form of a volume hologram arranged in the region of the window. The volume hologram has two subregions 71a and 71b arranged in juxtaposed relationship, each of which comprises a Bragg grating formed by a refractive index variation. The orientation of the Bragg planes in the subregion 71a is stated to be different to the orientation of the Bragg planes in the subregion 71b. Also the orientation of the Bragg planes in at least one of the subregions is stated to be neither parallel nor perpendicular to the plane of the carrier substrate. Each of these subregions is capable of producing a different holographic image under incident light.
In figure 7b, the viewer is seen viewing the document from the front side in incident light mode where the light source is on the same side of the document as the viewer. The incident light beam 540a is deflected by the Bragg gratings of subregion 71b in the direction 76 towards the viewer and the viewer sees this as a first image, which in this example is a leaf. The incident light is also deflected by the Bragg gratings of the subregion 71a in the direction 77, but as this direction is not towards the viewer, the viewer does not see the second image formed by the Bragg gratings of subregion 71a.
In figure 7c, the document has been flipped over and the viewer is viewing the same document from the rear side in incident light mode with the viewing angle and the angle of incidence of the light remaining unchanged. As the volume hologram is placed in the transparent region of the window, it is still capable of producing images when viewed from the rear side. The incident light beam 540a is deflected by the Bragg gratings of subregion 71b in the direction 77 away from the viewer and hence the viewer does not see the first image formed by the Bragg gratings of this subregion. However the incident light is now deflected by the Bragg gratings of the subregion 71a in the direction 76 towards the viewer and the viewer sees this as a second different image, which in this example is a cross.
It is also clear from reading the specification that the images formed by both subregions can be viewed from the same side of the document but at different viewing angles. This can be done by tilting the document. For example in figure 7b, although the image produced by subregion 71a is not seen in the viewing angle shown, if the document were to be tilted to the proper angle, then the image produced by subregion 71a would be seen and the image produced by subregion 71b would not be seen by the viewer. The variation in the orientation of the Bragg planes ensures that only the images produced by one of the subregions is visible at a particular viewing angle.
Another advantage of arranging the optical elements in the transparent window region of the document is that it permits the images formed by the Bragg gratings of the first and second subregions to also be viewed in the transillumination mode in which the light source is on the other side of document in relation to the viewer. Similar to incident light mode, different optical effects are produced in transillumination mode in a front view and in a rear view.
The specification also describes methods to produce the volume holograms having the first and second subregions. One such method is shown in figure 5a that is reproduced below:
A transparent carrier film 50 having a photopolymer film 52 on its underside is placed on a diffraction grating 53 having regions 53a with a first relief structure and regions 53b with a different second relief structure. A coherent light beam 500 that is incident on the carrier film, passes through the photopolymer film and gets diffracted at the diffraction grating with a part 501 being diffracted in the direction 501 by region 53a and a part 502 being diffracted in the direction 502 by the region 53b. These diffracted beams interfere in the polymer layer with the incident beam to form periodically arranged nodes or Bragg planes in respective first and second subregions with the Bragg planes formed by region 53a in one subregion having a different orientation to the Bragg planes formed by the region 53b in the second subregion.
The specification ends with 15 claims of which claim 1 is the only independent claim that I have reproduced earlier.
ONUS OF PROOF
The examination request for this patent application was filed on 6 September 2011. 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 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.
Consequently the former standard for opposition proceedings applies and the opponent must establish that it is clear or practically certain that the patent is invalid (F Hoffman La Roche AG v New England Biolabs Inc [ 2000] FCA 283 at [29] , [67]; [2000] FCA 283 ; 50 IPR 305 at 311, 319; Commissioner of Patents v Sherman [2008] FCAFC 182 at [18] , [22]; [2008] FCAFC 182 ; 79 IPR 426 ; Genetics Institute Inc v Kirin-Amgen Inc [1999] FCA 742 ; [1999] 92 FCR 106 at [17] ).
CLAIM CONSTRUCTION AND CLARITY
The correct approach to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70, 81 IPR 228 at [118] – [120]:
"Words in a claim should be read through the eyes of the skilled addressee in the context in which they appear. Words used in a specification are to be given the meaning which the person skilled in the art would attach to them, having regard to his or her own general knowledge and to what is disclosed in the body of the specification ... 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".
Claim 1:
It is clear from the submissions from the parties that there is a difference of opinion as to what is meant by the phrase “produce an optical effect which is different in a front view and in a rear view in an incident light mode”.
The opponent submitted that while one interpretation would be that different optical effects are seen in a front view and in a rear view with the viewing angle and incident light angle being the same, an alternative interpretation could be that one subregion is seen exclusively from one side and the other subregion is seen exclusively from the other side.
In my view the first interpretation is the only sensible interpretation when the claim is read in context. As the opponent admits, there is no support in the specification for the alternative interpretation.
The opponent further submitted that the term “optical effect which is different” does not necessarily mean a different visible image and can also refer to the non-existence of an image when viewed from one side.
In my view this phrase has to be construed not in isolation but in the context of the entire last paragraph of claim 1 which defines that “both light incident on a front side and on a rear side of the multi-layer body is diffracted by the optical-action elements and the elements produce an optical effect which is different in a front view and in a rear view in an incident light mode.” There is a clear requirement here that light incident on a front side and on a rear side should be able to be diffracted by the optical-action element of each of the first and second subregions and that the diffraction produced by both of the optical-action elements in combination produces an optical effect that is different in a front view and in a rear view. Whilst it is true that the image produced by a subregion in a front view is not visible from the same viewing angle in a rear view, the image produced by the other subregion is now visible in the rear view, thereby still producing an optical effect that can be seen by the viewer. It is the combination of the diffraction produced by the optical-action elements of each of these two subregions that produces different optical images in front and rear views. In my view, an optical effect, in the context of the claimed invention, requires an effect or image that can be seen by the viewer and it does not include a situation where no image is seen. Such a construction is also fully consistent with the teaching of the body of the specification.
The opponent also submitted that the meaning of the phrase “mutually juxtaposed relationship” is not clear. As the Macquarie Dictionary defines the term “juxtaposed” as “to place in close proximity or side by side”, it is unclear whether the first and second subregions are required to be side by side, or more broadly in close proximity. They further submitted that it is also not clear what further limitation is imposed by the term “mutually”, how closely spaced the subregions should be and what would be considered to fall outside of the “mutually juxtaposed” requirement.
Any ambiguity in relation to the meaning of the term “juxtaposed relationship” can be easily resolved by having regard to the body of the specification. In my view, it would be clear to the skilled addressee when the claim is read in the context of the specification as a whole, that this term refers to the two subregions being situated side by side as can be seen from figures 7b and 7c that I have reproduced earlier. While the presence of the word “mutually” would appear to be a redundant given that the term “juxtaposed relationship” would necessarily imply a mutually juxtaposed relationship, it does not create any ambiguity. Also I do not see the need for the applicant to specify how closely spaced the two subregions should be. The skilled addressee would be able to work this out given the requirement for the two subregions to form different images from the same viewing angle in front and rear views. This term is therefore clear.
Claims 2, 5, 9 and 11:
While the opponent also argued that the scope of claims 2, 5, 9 and 11 is not clear as it is not understood what restriction is provided by the term “preferably” as used within these claims, it is clear that integers that are qualified by this term are merely optional features and do not further restrict the scope of the claim. This term is clear.
Similarly while the opponent also submitted that the term “almost” as used in claim 2 is unclear, the applicant argued that this term implies that the planes need not be exactly perpendicular. I understand this term to mean that the planes are close to being perpendicular while not being exactly perpendicular. This arrangement according to the body of the specification is to permit the optical effect to also be seen in the transillumination mode. This term is clear. I further note that this integer is qualified by the term “preferably” and is therefore only optional.
The opponent also submitted that claim 5 lacks clarity as it is not understood how if the surface extent is 300µm, it can then also be 20µm. While there is some ambiguity on the face of the claim, when regard is had to the body of the specification on page 5, lines 23-27, it is clear that this intended to mean at least 20µm and preferably 300µm. This claim is clear.
Claims 7, 8:
The opponent submitted that these claims lack clarity regarding the meaning of the term “nested” as used in these claims as this term would normally be interpreted as “one item within another”, however the opposed specification shows subregions that alternate one to the other. Also in claim 8, it is difficult to envisage how lines can “nest” within one another.
The applicant accepted that this term may give rise to some ambiguity but is the result of the translation from the original German specification. They argued that the more appropriate term would have been “interlaced” and that any ambiguity is easily resolved by reference to the description and I tend to agree.
I think it is important to understand the term “nested” in its proper context as stressed by the authorities. Each of the subregions is described as containing a different item of image information, which then combine to produce an optical effect that is different in the front and rear views at the same viewing angle. So while the subregions are in a juxtaposed relationship, they also each include a plurality of first and second individual regions respectively and these individual regions are placed in an alternating arrangement within the volume hologram as can be seen for example in figure 5a. In my view, it is this alternating arrangement of these first and second individual regions that is referred to as being “nested” within the claim. The meaning of this term would be clear to the skilled addressee when the claim is read in context.
Claim 12:
It was the opponent’s view that the definition “wherein the one or more elements do not or at least partially cover over the at least first and second subregions” encompasses from no cover to full cover and therefore the claim lacks clarity.
I do not find this submission persuasive. According to the body of the specification a further security element such as a diffractive OVD can be placed either beside the volume hologram or it can also at least partially cover the volume hologram as in the case of a lens which can then interact with the volume hologram to produce an additional optical effect. That is what this claim defines. It is clear.
NOVELTY
The general test for lack of novelty is the reverse infringement test. The classic formulation of this test was 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 the essential features of the invention as claimed (see Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40; (1990) 91 ALR 513 at 517). In order to meet this requirement, the prior art must "contain clear and unmistakeable 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).
In AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99, the full Federal Court held:
“Sufficiency of disclosure is a cardinal anterior requirement in the analysis of whether a prior art document anticipates a claimed invention. It is only after the stage of assessing the sufficiency of disclosure – which involves a determination about whether a prior document has “planted the flag” as opposed to having provided merely “a signpost, however clear, upon the road” or, perhaps, something less – that the notion of reverse infringement comes into play as the final and resolving step of the required analysis. It is not the first step of the required analysis; nor is it the only step”.
In relation to the specificity required in order for a prior art document to anticipate the claimed invention, the full court in AstraZeneca (supra) also quoted with approval the following quote from Gyles J in Apotex Pty Ltd and Another v Sanofi-Aventis and Another [2008] FCA 1194; (2008) 78 IPR 485:
“anticipation is deadly but requires the accuracy of a sniper, not the firing of a 12 gauge shotgun”.
D2: WO 2007/115785 (OVD Kinegram AG) (&AU 2007236170)
This is the only document relied on for the ground of novelty. As it was published on 18 October 2007 which is after the claimed priority date of 21 May 2007, it can only be used as a “whole of contents” novelty citation.
It is titled “Multi-layer body having a volume hologram” and is in the name of the present applicant. It discloses a process for forming a volume hologram in a transparent layer, wherein the volume hologram contains two different items of image information as a holographic image of two interlaced different surface structures. The transparent layer with the volume hologram can be used with security documents such as banknotes, passports etc. Each of the two items of image information is formed in first and second subregions respectively and forms an optical action element. This much appears to be common ground.
In relation to integer 1.4 Mr Pizzanelli accepts that there is no explicit disclosure of this integer, but submits that this is inherent due to the use of asymmetric relief structures to form the volume holograms. Although the applicant has disputed this assumption, I tend to agree with the opponent. It is clear from the evidence that a volume hologram necessarily comprises a plurality of periodically arranged nodes or Bragg planes having a refractive index variation. For example “Optical Document Security” by Van Renesse (exhibit DJP-11) in section “7.2.5 Volume Reflection Holography” mentions that the interference patterns in volume holograms “consists of layers throughout the thickness of the recording medium more or less parallel to its surface”. Even Mr Schell states “I agree with JRG to some extent that a volume hologram having refractive index variations corresponding to periodically arranged nodes, where the periodically arranged nodes are arranged in substantially mutually planes - can be categorized under the heading general knowledge.” I am therefore satisfied that this integer is disclosed.
In relation to integers 1.5 and 1.6, the opponent basically relies on the figures of D2 which show a master with asymmetric relief structures such as blaze gratings in which the planes forming the upper surfaces of the relief structures are neither parallel nor perpendicular to the layer plane. This can be seen for example in figure 3f reproduced below:
The polymer layer 36 is placed on top of the asymmetric diffraction grating 34 having two regions with different relief structures (34m and 34m). Incident light 37 produces Bragg planes or nodes in the polymer layer in a manner similar to the opposed specification.
The applicant argued that the Bragg planes in a volume hologram are generally parallel to the layer plane and that therefore these integers are not disclosed and they referred me to the passage from Van Renesse that I quoted in the paragraph [43] in support of this contention. While I accept that the evidence suggests that Bragg planes in a volume hologram are generally parallel to the layer plane, they need not necessarily have to be so as for example in the opposed specification. It is clear that D2 uses a similar asymmetric relief structure to form the volume hologram having two juxtaposed subregions. Therefore in my view it is inevitable that the Bragg planes in these two subregions will also extend in different directions and at least in one region it will be neither parallel nor perpendicular to the layer plane similar to the claimed invention. These integers are disclosed.
In relation to integers 1.7 and 1.8, the opponent states “The result of having two relief structures which ‘differ in terms of the angle of inclination’ (page 5, lines 18-19) is that the two subregions will be viewable at different angles when viewed from the same side. As discussed in the Pizzanelli declaration, and shown in D17, an image switch effect in a window is equivalent to providing an optical effect which is different in a front view and in a rear view.”
D2 is totally silent on any ability to view the optical effects from a front side and a rear side let alone the further requirement that the optical effect be different in the front view and the rear view. While D2 discloses that the optical effect will be different at different angles when viewed from the same side, in my view that does not necessarily follow that the optical effect can also be viewed from the opposite side and will again be different at different angles. In fact even Mr Pizzanelli states “In my opinion, therefore, claim 1 is unusual in that it states “… which is different in a front view and in a rear view in an incident light mode”, seeing as the more usual arrangements would have a black layer blocking the viewing of the hologram layer from one side (i.e. the back).”
In my view D2 does not disclose integers 1.7 and 1.8.
As one or more integers of claim 1 are not disclosed in D2, it follows that claim 1 and its dependent claims are novel over D2.
D19: WO 2007/042177
D19 discloses a security document having an interactive security element comprising a volume hologram and a further second security element. The interactive security element can be applied to a common substrate of the security document in the form of a label or a thread or a window and therefore “will usually be visible from at least one surface of the common substrate”. While the opponent submitted that this implies that the optical effect produced by the transparent volume hologram will be visible from both sides of the document, I am not convinced. There is no suggestion anywhere in D19 that an optical effect can be seen from both sides of the document. In fact it would appear to teach away from this integer when it states on page 32 “In order to enhance the visual effect of the volume hologram, an absorbing (i.e. black or dark coloured) and/or reflecting background for the volume hologram on the substrate is preferred. Therefore, the surface of the substrate lying underneath the volume hologram on the side thereof which is not illuminated should preferably exhibit absorbing or reflecting characteristics or a combination of both”. In my view this integer is not disclosed.
The volume hologram of the interactive security element is responsive to an external stimulus such as moisture or temperature to exhibit a first image at one viewing angle and a second image at a different viewing angle. The opponent submitted that this necessarily requires the volume hologram to include first and second subregions that are in a mutually juxtaposed relationship. While I accept the existence of first and second subregions, I can find no disclosure to suggest that these subregions are in in “mutually juxtaposed relationship”. In fact D19 appears to teach that the first and second subregions occupy the same space of the volume hologram as conceded by Mr Pizzanelli (Pizzanelli #2, paragraph 20).
D19 discloses the hologram has periodically arranged nodes which are formed by refractive index variation, but does not explicitly disclose that the planes in the first subregion are not parallel to the planes in the second subregion and that the planes in at least one subregion neither extend parallel nor perpendicular to the layer plane. The opponent submitted that according to Mr Pizzanelli, this is inherent given that the hologram produces different images at different viewing angles. While the applicant has argued that Dr Pizzanelli’s statement is a mere assertion based on hindsight, I note that their expert Mr Schell in his responding evidence has not disputed this. I therefore accept that these integers are disclosed.
In respect of integers 1.7 and 1.8, Mr Pizzanelli concedes that D19 does not explicitly disclose that a different optical effect is seen in a rear view, but states “D19 conforms to the features as they are stipulated in Claim 1 at this point, because a typical off-axis volume hologram will display an “optical effect” that is “different”, simply because the image seen from the front side of a volume hologram is no longer visible from the reverse side of the hologram.”
I have earlier construed that the lack of an image when viewed from the rear side is not the same as producing an optical effect that is different as required by claim 1. Hence without some explicit reference to the hologram of D19 producing a different perceivable optical image when viewed from the rear, I am not satisfied that these integers of claim 1 are disclosed.
One or more integers of claim 1 are not disclosed in D19. The claimed invention is therefore novel over D19.
D20: US 2002/0044313
D20 relates to an optical feature for security documents. The optical feature comprises a dual-channel hologram with each channel comprising a hologram structure that produces an optical effect at a respective viewing angle. While it states that it is particularly advantageous to use embossed holograms, it also mentions that volume holograms can be used. A first hologram structure that constitutes the first channel is formed on a security document. A second hologram structure which constitutes the second channel is separately formed on a transparent carrier which is then applied to the first hologram structure in such a manner that the first hologram structure is visible through the transparent regions of the carrier material of the second hologram structure.
The opponent submitted that although there is no clear disclosure that the first hologram is formed in a transparent region of the carrier substrate, Mr Pizzanelli has stated that as volume holograms that are recorded on materials such as photopolymer are transparent until they are coated with a backing material that makes them opaque, it is inherent that the first hologram is also formed on a transparent region and that therefore integers 1.1 to 1.3 are disclosed in D20.
I am not convinced. D20 states in paragraphs [56], [57] that to increase the contrast, the structure can be applied to a dark or reflecting background. Such a background would not allow the volume hologram to be seen from the rear side of the document. Therefore in my view, D20 teaches away from the holograms being able to be viewed from the rear side of the substrate.
Mr Pizzanelli has stated in his evidence in relation to D20 that the use of volume holograms would inherently disclose integer 1.4, and the fact that each of the hologram structures being viewable at different viewing angles would imply the Bragg planes in the two structures are not parallel to each other and that the planes in at least one of the hologram structures extend neither parallel nor perpendicular to the layer plane thereby disclosing integers 1.5 and 1.6.
Again while the applicant argued that it is not possible to make assumptions of the orientation of the Bragg planes merely from observation of the volume holograms, I note that Mr Schell does not dispute this in his evidence in answer. I am therefore satisfied that integers 1.4-1.6 are inherently disclosed in the arrangement of the hologram structures of D20.
In relation to integers 1.7 and 1.8, there is not even a suggestion in D20 that the hologram structures are viewable from both front and rear sides or that that they will produce different optical effects depending on whether the light is incident on the front side or the rear side of the body. These integers require that the hologram structures produce perceivable images that are different in a front view and a rear view. As I have found earlier, the ability to view different images from different viewing angles from the same side of the document or there being an absence of image when viewed from the rear does not equate to optical effects being different in a front view and a rear view.These integers are not disclosed.
One or more integers of claim 1 are not disclosed in D20. The claimed invention is therefore novel over D20.
INVENTIVE STEP
Problem to be addressed
As mentioned earlier the specification does not identify any specific deficiencies with prior art security devices in security documents but merely states that the object of the present invention is to provide a multi-layered body having an improved optical-action element for use in security documents.
Ascertain, understood and regarded as relevant
Both Mr Pizzanelli and Mr Hardwick have stated that they would keep abreast of developments and knowledge in the field by reading published patent documents. Mr Schell has not provided any contrary view on this. I am therefore satisfied that the skilled addressee in the field of security devices for security documents would have regard to patent specifications to gain ideas for solving a specific problem.
Each of the documents relied on by the opponent for inventive step relates to security features in security documents like banknotes. Therefore in my view, they are documents that a skilled addressee would have ascertained, understood and regarded as relevant in order to come up with an improved optical-action element for security documents.
D1: WO 2006/002552
D1 discloses a security document in which a transparent thermoplastic layer 7 having a homogenous volume hologram 5 is applied to the surface of a substrate 1a with the interposition of a surface structure 6 with bumps. This causes local distorted non-homogenous regions 10 in the volume hologram 7, where the node spacing and orientation of the volume hologram is different from what it was prior to distortion. These features can be seen in figure 2 which is as shown below:
The opponent submitted that because of this local distortion, the volume hologram will have first and second subregions in which the mutually parallel planes of the first subregion will not be parallel to the mutually parallel planes of the second subregion and at least in one subregion the planes extend neither parallel nor perpendicular to the layer plane. They accepted that there is no disclosure in D1 of placing the hologram at least partially within a transparent window, but argued that this would have been a logical and obvious modification as placing security features within a transparent window of banknotes was common general knowledge (CGK) in the art.
I do not find the opponent’s submissions persuasive. D1 teaches securing the transparent layer with the volume hologram on to a non-transparent substrate 1a and this is presumably to provide good contrast for a reflection volume hologram. There is no suggestion in D1 that the volume hologram could be placed in a transparent window of the security document. While I accept that banknotes with optically variable devices (OVD) in transparent windows were CGK in the art at the priority date, the opponent’s evidence has not established that the placement of volume holograms in transparent windows of security documents was CGK. On the other hand the evidence and the various prior art strongly suggest that volume holograms are typically provided with a dark backing “to ensure that the wavelengths not diffracted by the volume hologram are not subsequently reflected from the surface of the substrate, thereby drowning out the volume hologram image” (Pizzanelli #1).
While Mr Pizzanelli states that placing the volume hologram in a transparent window would be an obvious thing to do, I note that he makes this statement in hindsight after having read the opposed specification. The authorities have warned that such statements should be treated with great caution. In PAC Mining Pty Ltd v Esco Corporation [2009] FCAFC 18, the full Federal Court held:
“The primary Judge took the view that the value of Prof Wightley’s evidence was compromised by reason of the circumstance that, from the outset, he had been exposed to the shortcoming to which Toplok was perceived to be subject, and to the terms of Jones I, as well as to those of the patents in suit. In other words, Prof Wightley, from the outset, knew the problem, and he knew the solution. The authorities make it clear that the caution with which his Honour approached the evidence of Prof Wightley was both justified and desirable: Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19; (1977) 137 CLR 228, 242; Alphapharm 212 CLR at 423-424 [21]; Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) [2007] HCA 21; (2007) 235 ALR 202, 215 [46].”
In GlaxoSmithKline Consumer Healthcare Investments (Ireland) (No.2) Limited v Apotex Pty Ltd [2014] FCA 1398 Beach J held:
“An egregious form of impermissible hindsight has been the situation where a witness has been shown the patent specification in suit at a stage prior to that witness giving evidence that there was no inventive step involved.”
I cannot therefore be satisfied that Mr Pizzanelli’s opinion as to the obviousness of placing volume holograms in a transparent window of a security document has not been tainted by hindsight. In such circumstances, I also cannot be satisfied that it is clear or practically certain that the claimed invention is obvious in the light of the teachings of D1 and the CGK.
D5: WO 2006/074558
D5 discloses a security document having a security feature 5 that comprises two holographic layers 6, 7 arranged on top of a carrier layer 1. Each holographic layer comprises a reflective volume hologram 8, 9 respectively that in incident light will reflect light back. Both volume holograms comprise periodically arranged nodes which are formed by refractive index variation and which are arranged in mutually parallel planes. As the two holograms become visible in different viewing angles, it is inherent that the planes in the first hologram are not parallel to the planes in the second hologram. However, similar to D1, there is no suggestion that the holograms can be placed in a transparent window of the document. In fact D5 states “The carrier 1 in the region of the security feature should be non-transparent.”
While Mr Pizzanelli again states that it would be an obvious modification to put the volume holograms over a transparent window, I am not convinced for the same reasons as I have given for document D1.
The claimed invention is inventive over D5.
D16: WO 2006/133863
D16 discloses a security document comprising a transparent security element 12 which is arranged in a transparent window region 14 of the document. The security element produces a first optical effect when viewed from a front side of the document and a second optical effect when viewed from a rear side. In this respect it is therefore very similar to the claimed invention. However the security element is not formed of a volume hologram but instead comprises an asymmetrical diffractive relief structure which in a preferred form is a sawtooth-shaped blaze grating 16f. This can be best seen in figure 4a reproduced below:
As the security feature of D16 is not a volume hologram, it does not disclose the integer of each of the subregions having a plurality of nodes formed by a refractive index variation and which are arranged in mutually parallel planes.
The opponent submitted that it was well known to include many examples of diffractive features within windows of banknotes and that a person skilled in the art (PSA) would have, as a matter of routine, considered replacing the diffractive device of D16 with a volume hologram to provide an improved security window.
I have no evidence to suggest that the PSA would consider that the security device of D16 has drawbacks and would therefore be motivated to replace them with a different type of security feature. Even if they would be so motivated, there is nothing to suggest that the use of volume holograms would have been the obvious choice. As discussed earlier, volume holograms have typically been placed over a non-transparent substrate so as to improve the contrast of the reflective hologram that is viewed only from the front side. I therefore fail to see why it would be a logical step or a matter of routine to replace the blazed grating of D16 with a volume hologram. Although Mr Pizzanelli states that this would be an obvious thing to do, I again note that he has made this assertion with the benefit of hindsight.
I am not satisfied that it is clear or practically certain that the claimed invention is obvious in the light of the teachings of D16 and the CGK.
D19: WO 2007/042177
The opponent submitted that if I were to find the D19 does not disclose all of the integers of claim 1, then those integers would not provide an inventive step.
They argued that placing the two volume holograms next to one another would have been considered an obvious modification, as the overall effect is the same. Furthermore as D19 does envisage placing the security element in the window of a security document, the PSA would have found motivation to place the dual channel volume hologram onto a transparent window such that the volume hologram would be visible from either side of the document and that the structural characteristics of the dual channel volume hologram would satisfy the requirement of the optical effect produced by the volume hologram being different in a front view and a rear view in incident light mode.
The two subregions of volume hologram are taught in D19 to occupy the space of the volume hologram and I can see no motivation for the skilled addressee to want to modify that arrangement and place them in a juxtaposed relationship so that both subregions can be viewed from either side of the document.
Even if I accept that the reference to placement in a window would lead the skilled addressee to place the dual channel volume hologram in a transparent window, that would not, in my view, inevitably result in the volume hologram providing an optical effect that is different in a front view and in a rear view. As discussed earlier in relation to Novelty, D19 teaches that it is preferred to provide an absorbing and/or reflecting background and with such a background the hologram would not be visible from both sides of the document even when placed in a transparent window. In the claimed invention, it is the placement of the volume hologram in a transparent window without any dark background that permits the viewer to see different images in front and rear views. Furthermore as discussed earlier, the feature of different images being seen from different viewing angles from the same side of the document or there being an absence of image when viewed from the rear does not equate to optical effects being different in a front view and a rear view.
I am not satisfied that it is clear or practically certain that the claimed invention is obvious in the light of the teachings of D19 and the CGK.
D20: US 2002/0044313
I have earlier found that D20 does not disclose the integers of the holograms being arranged in a transparent region of the substrate and the holograms producing different images when viewed in a front view and in a rear view.
Similar to D19, D20 also teaches that the hologram structure can be applied to a dark background to increase the contrast. This again suggests that there is no recognition in D20 of the ability to view the holograms from both sides of the document or the additional security benefits such an arrangement can provide. While Mr Pizzanelli states that it would be obvious to place the holograms in a transparent window, similar to his statements in relation to the other documents this assertion has been made with the benefit of hindsight. Furthermore even if it was obvious to place the holograms in a transparent window, the evidence does not satisfy me that the arrangement of the two hologram structures would inevitably produce different visible images in front and rear views.
The claimed invention is inventive over D20.
SUFFICIENCY
The opponent submitted that although the specification discloses both “reflection type” volume holograms and “transmission type” holograms, there is no method described within the specification for forming “transmission type” holograms and that this is supported by views expressed by Mr Pizzanelli (115 and 116 of Pizzanelli #1).
The applicant argued that both Mr Schell and Mr Tompkin have stated that there is sufficient disclosure in the specification for a skilled addressee to perform the invention in respect of transmission type holograms without undue experimentation. In particular they referred me to the following passages in the description:
- Page 6, line 29 to page 7, line 9
- Page 9, lines 24-27
- Page 10, lines 2-12
The test for full description was expressed in Kimberly-Clark v Arico (2001) 207 CLR 1 (paragraph 25) as:
"… will the disclosure enable the addressee of the specification to produce something within each claim without new inventions or additions or prolonged study of matters presenting initial difficulty?"
There is no requirement under Australian law that a claim has to be enabled over its full scope, nor for every possible application of the invention to work or to have been demonstrated to work (see Photocure v Queen’s University 64 IPR 314 at paragraph 107, Bristol- Myers Squibb Co v F H Faulding & Co Ltd [2000] FCA 316 at paragraph 77).
The passages that the applicant referred me to, clearly talk about the ability to view the volume holograms in transillumination mode. They make specific mention of making the Bragg planes approximately perpendicular to the layer plane, whereby light which is approximately perpendicularly incident on the rear side is diffracted by the planes through the transparent region to produce an image information that can be seen by the viewer viewing from the front side.
Mr Pizzanelli’s opinion on this ground does not make reference to these paragraphs or explain why the information disclosed therein would be insufficient to perform the claimed invention without new invention or undue experimentation.
I am satisfied that the claimed invention is fully described.
FAIR BASIS
The opponent submitted that claim 1 is not fairly based on the specification as it includes an embodiment in which the first and second subregions both act in transillumination mode, whereas reading the specification, the invention always includes at least one reflection mode volume hologram.
I am not convinced. As the applicant argued, claim 1 includes the limitation of an optical effect in an incident light mode which is clearly defined in the body of the specification as light source being on the same side as the viewer, thereby producing an optical effect in a reflection mode. Claim 1 does not extend beyond the subject matter described and is fairly based.
The opponent further submitted that as claim 6 defines that the optical action elements are in the form of volume holograms, the implication is that the optical action elements in claim 1 are not limited to volume holograms even though the specification makes it clear that the optical-action elements are volume holograms.
Although all of the embodiments are directed to volume holograms, I can find nothing unusual or wrong in defining the optical action elements in claim 1 only by the optical effect they produce and then subsequently defining how they are constructed in a later dependent claim. Claim 1 is fairly based.
CONCLUSION
The opponent has not made out any of the grounds of the opposition. The claimed invention is novel, inventive, fully described, clear and fairly based. I direct that the application proceed to grant subject to any appeal being filed within the prescribed period.
COSTS
100.The applicant has submitted that they should be awarded costs if the opposition is unsuccessful. I see no reason to vary the practice of costs following the event. As the opposition is entirely unsuccessful I awards costs according to schedule 8 against the opponent Innovia Security Pty Ltd.
R Subbarayan
Delegate of the Commissioner of Patents
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