Innovia Security Pty Ltd v OVD Kinegram AG
[2015] APO 13
•31 March 2015
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Innovia Security Pty Ltd v OVD Kinegram AG [2015] APO 13
Patent Application: 2006257367
Title:Security Document
Patent Applicant: OVD Kinegram AG
Opponent: Innovia Security Pty Ltd
Delegate: Dr N.R. Madsen
Decision Date: 31 March 2015
Hearing Date: 19 January 2015, in Canberra
Catchwords: PATENTS – section 59 – opposition to grant of a patent – grounds of clarity, full description, fair basis and novelty not established – inventive step – claims 1, 2, 6-8 and 20-23 lack an inventive step – opposition successful – opportunity to amend – no award of costs
Representation: Patent applicant: Mark Horsburgh of Fisher Adams Kelly Pty Ltd assisted by Jon Wright of Fisher Adams Kelly Pty Ltd
Opponent:J Roger Green of Watermark assisted by Nigel Pereira of Watermark
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2006257367
Title:Security Document
Patent Applicant: OVD Kinegram AG
Date of Decision: 31 March 2015
DECISION
The opposition is successful. Claims 1, 2, 6-8 and 20-23 lack an inventive step.
I allow the applicant two (2) months from the date of this decision to propose amendments to overcome these deficiencies.
I make no award of costs.
REASONS FOR DECISION
Background
This matter relates to patent application 2006257367 in the name of OVD Kinegram AG (the applicant), filed on 9 June 2006 as an application under the Patent Cooperation Treaty. The application claims priority from DE 102005027380.7 which was filed on 14 June 2005.
The request for examination of the patent application was filed on 15 January 2008. As a consequence, substantive amendments of the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 do not apply to the present patent application. 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. I also note that any subsequent reference to subsections of the Patents Act relates to the Patents Act 1990, prior to amendment by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012.
The application was advertised as accepted on 3 September 2009. A notice of opposition to grant of a patent was filed on 3 December 2009 by Securency International Pty Ltd who later changed their name to Innovia Security Pty Ltd (the opponent), followed by a statement of grounds and particulars on 3 March 2010.
The opponent filed amendments to their statement of grounds and particulars on 30 September 2011 and again on 15 October 2013. Both of these amendments were allowed with the later amendment providing the basis of the opposition to be heard.
Summaries of submissions were received by both parties before the hearing, wherein both parties filed their submissions one day after their respective deadlines (being 10 business days before the hearing for the opponent and 5 days for the applicant). The opponent also filed a letter indicating that a number of particularised citations were not in evidence, while also providing copies of these documents. Before the hearing, the parties were informed that I would consider the letter and additional documents filed by the opponent as a request for further evidence which was to be considered at the hearing.
Further evidence considered at hearing
A number of documents that were identified in the statement of grounds and particulars were not adduced as evidence prior to the hearing. As discussed above, the opponent sought to adduce these documents at the time of filing their summary of submissions. These documents were:
·D6 - US 2002/002731
·D7 - WO 1995/02200
·D8 - WO 1999/059036
·D9 - Optical Document Security, 1st edition (1994) by Van Renesse, pages 221-223.
In this case the applicant raised no objection to the documents being considered as further evidence and, in fact, agreed that further evidence should be allowed in the present circumstances. The documents had already been considered by both parties prior to the hearing, and both parties have had an opportunity to make, and indeed made, representations about them. I consider the criteria for serving further evidence under regulation 5.10(4) and 5.10(5) have been met and thus permit the further evidence.
The evidence
Evidence consists of:
Evidence in support in the form of a declaration from David Julian Pizzanelli (DJP #1) dated 24 August 2011 and 9 supporting exhibits (DJP-1 to DJP-9)
Evidence in answer in the form of a declaration from Karen Johan Schell (KJS #1) dated 15 November 2012 and 10 supporting exhibits (KJS-1 and KJS-10)
Evidence in answer in the form of a declaration from Karen Johan Schell (KJS #2) dated 16 May 2013
Evidence in answer in the form of a declaration from Wayne Robert Tompkin (WRT #1) dated 27 May 2013
Evidence in reply in the form of a declaration from Glenyse Joyce Duke (GJD#1) dated 28 February 2013 and with supporting annexures A and B
Evidence in reply in the form of a declaration from Bruce Alfred Hardwick (BAH #1) dated 30 September 2013 and 27 supporting exhibits (BAH-1 to BAH-27)
Further evidence from the applicant in the form of a declaration from Karen Johan Schell (KJS #3) dated 20 December 2013 and 6 supporting exhibits (KJS-11 and KJS-16)
Further evidence in response from the opponent in the form of a declaration from Bruce Alfred Hardwick (BAH #2) dated 19 February 2014 and 3 supporting exhibits (BAH-28 to BAH-30)
Additional Further evidence from the applicant in the form of a declaration from Karen Johan Schell (KJS #4) dated 10 April 2014 and 1 supporting exhibit (KJS-17)
Further evidence from the opponent in the form of documents D6-D9
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 identified and particularised the following grounds of opposition in the statement of grounds and particulars (SGP):
·Lack of novelty
·Lack of inventive step
·Lack of full description
·Lack of clarity of the claims
·Lack of fair basis in the specification
I note that the SGP invokes subsection 40(2) but recites particulars only relating to s40(2)(a) – full description. At the hearing the opponent made submissions that that the claims did not define the invention. However, there is no invocation of a ground under paragraph 40(2)(b) in the SGP. In this regard the opponent has not provided the applicant with any notice of a case to be met under s40(2)(b). As a result, in terms of s40(2), I will only consider the ground under s40(2)(a) – full description – as part of this decision.
The Specification
The invention described in the specification relates to the field of security documents, such as banknotes, which have particular optical structures provided to protect the documents from being copied. In particular, the present invention relates to a security document with a transparent region which contains at least one diffractive relief structure. The relief structure is asymmetric and is capable of producing an optical effect in incident light which is different in the front view of the document from the rear view. The invention is said to achieve the object of providing a “security document which is inexpensive to manufacture and which solely by viewing a window of a security element deploys an optical effect which is striking to the observer and typical of authenticity” (page 2 lines 21-24).
The embodiments of the invention are said to achieve the result whereby information visible on the front side of the document is not merely a laterally reversed representation of the respective item of information visible on the rear side, and vice versa. The specification describes the invention with respect to three embodiments which I will briefly discuss.
Embodiment 1
A first embodiment is described with reference to figures 1 to 5. I have reproduced figures 2, 3a and 3b to demonstrate operation of this embodiment. Figure 2 shows a transparent security element 12 containing two interlocking rasters of asymmetric diffractive relief structures 12F and 12T.
One rastered structure forms a letter F and the other forms a letter T. Figures 3a and 3b show that the diffractive relief structures are of a sawtooth shape and are mirror images of each other. Because these structures are reflective, the mirror image arrangement allows light incident upon the relief structures to reflect in a particular direction depending upon which structure the light strikes. As such, when viewing the structures from a first side in a manner that makes reflected light visible from one of the structures, light from the other structure will not be visible. In other words, if the F structure is visible from the front side the T structure will not be visible. An equivalent viewing of the rear side will mean the F structure is now no longer visible while the T structure is now visible. This feature conforms to the effect that information visible on the front side is not merely a laterally reversed representation of the respective item of information visible on the rear side.
Embodiment 2
A second embodiment is described with reference to figures 7a and 7b in which two relief structures provide a contrast reversal.
Instead of an interlocking raster pattern the transparent structure layer contains two neighbouring asymmetric relief structures that are mirror images of one another in the same way as described in relation to the first embodiment. When viewing from one side, one of the relief structures will “light up” while the other appears darker. The relief structures will then reverse their effect when the structures are viewed from the other side. In this regard, the features produce an effect of contrast reversal whereby information visible on one side is something other than a mere lateral reversal of the information visible on the other side.
A variation to this embodiment is discussed on page 19 at lines 27-31 whereby one of the relief structures is an asymmetrical relief structure and the other is a surrounding symmetric relief structure, matt structure or flat surface.
Embodiment 3
A third embodiment is described with reference to figures 8-10. Figure 9b shows a single asymmetric diffractive structure in the form of a Fresnel lens/mirror type structure. Here a single asymmetric diffractive relief structure acts as a concave mirror.
In operation, an image or graphics may be arranged at a suitable spacing from the diffractive structure according to its focal length. The effect of this arrangement will be that an image or graphics arranged in front of the structure will stand out or hover over or under the surface of the document depending on its position with respect to the diffractive structure (page 22 lines 26-30). In this regard, the respective information visible on a front side and a rear side will not be a mere lateral reversal of the information visible on the other side.
The claims
The specification ends with 23 claims whereby there is only one independent claim.
1.A security document comprising a carrier substrate and a transparent security element (12, 62, 72, 92) which is arranged in a window or in a transparent region of the carrier substrate and which has a transparent structure layer (16, 62, 96) and a diffractive relief structure shaped into a first surface of the structure layer,
wherein in a first region (12f, 72a) of the structure layer (16, 66, 96) a first relief structure is shaped into the first surface of the structure layer (16, 66, 96), which is in the form of an asymmetrical diffractive relief structure with a period length of up to 20μm and contains an item of alphanumeric and/or graphic information which is visible for a viewer on a front side and/or a rear side of the security element (12, 62, 72, 92),
wherein in respect of the first surface adjoining the structure layer (16, 66, 96) are one or more layers which are in the form of reflective transparent layers or are in the form of transparent layers having a refractive index difference > 0.2 in relation to the structure layer so that both the light incident on the front side of the security element (12, 62, 72, 92) and also the light incident on the rear side thereof is diffracted in a first region (12f, 72a) by the first relief structure and
wherein the first relief structure is such that the first relief structure in incident light produces an optical effect which is different in the front view and in the rear view such that the information visible to the viewer on the front side and/or the rear side is not merely a laterally reversed representation of the respective item of information visible on the opposite side.
2.A security document according to claim 1 characterised in that in a second region (12t, 72b) of the structure layer (16, 66, 96) a second relief structure is shaped into the first surface of the structure layer (16, 66, 96), which is in the form of an asymmetrical diffractive structure and the configuration of which is formed substantially in mirror image relationship with the configuration of the first relief structure shaped in the first region(12f, 72a), wherein the second relief structure in incident light has an optical effect which is different in the front view and in the rear view.
3.A security document according to claim 2 characterised in that the first region (2f) and the second region (12t) of the structure layer (16) form mutually interlocking rasters.
4.A security document according to claim 3 characterised in that the first region (12f) and the second region (12t) of the structure layer (16) form mutually interlocking linear rasters.
5.A security document according to claim 3 or claim 4 characterised in that the raster width is <300μm, in particular being 50μm.
6.A security document according to one of the preceding claims characterised in that first relief structure and/or second relief structure is in the form of a blazed grating.
7.A security document according to claim 6 characterised in that the blazed grating is in the form of an achromatic blazed grating with a grating constant of 20μm to 3μm, in particular of 10μm, and is of a profile depth of from 0.3μm to 5μm, in particular being 1.5μm.
8.A security document according to claim 6 characterised in that the blazed grating is a chromatic blazed grating with a grating constant of less than 2μm, in particular with a grating constant of 1μm.
9.A security document according to one of the preceding claims characterised in that the first surface of the structure layer (16, 66, 96) is coated at least region-wise with a reflecting metallic layer (96m).
10.A security document according to claim 9 characterised in that the reflecting metallic layer (96m) is formed portion-wise from different materials, in particular the first region (12f) is coated with a first metallic layer and the second region (12t) is coated with a second metallic layer.
11.A security document according to claim 9 characterised in that the metallic layer (96m) has opaque regions in a pattern form.
12.A security document according to claim 9 characterised in that the metallic layer (96m) is formed at least region-wise of such a thickness that it is transparent in transillumination.
13.A security document according to one of the preceding claims characterised in that the first surface of the structure layer (16, 66, 96) is coated at least region-wise with a dielectric HRI layer with a high refractive index, wherein the coated regions are of semi-transparent nature.
14.A security document according to one of the preceding claims characterised in that the first relief structure or the second relief structure is an asymmetrical diffractive relief structure (96r) which is formed starting from a reference point in at least two directions with changing spatial frequency or depth and to which a reflection layer is applied.
15.A security document according to one of the preceding claims characterised in that in a third region of the structure layer (16, 66, 96) a third relief structure is shaped into the first surface of the structure layer (16, 66, 96), wherein in incident light the third relief structure produces an optical effect which is the same in a front view and a rear view.
16.A security document according to claim 14 characterised in that the third relief structure is in the form of a symmetrical diffractive relief structure.
17.A security document according to claim 14 characterised in that the third relief structure is in the form of a matt structure.
18.A security document according to claim 14 characterised in that a thin layer system is arranged in the third region.
19.A security document according to claim 14 characterised in that a liquid crystal layer is arranged in the third region.
20.A security document according to one of the preceding claims characterised in that the security element is a multi-layer film body with a transparent carrier layer.
21.A security document according to one of claims 1 to 18 characterised in that the security element is a transfer layer of a transfer film.
22.A security document according to one of claims 1 to 18 characterised in that the structure layer (16, 66, 96) is an outer layer of the security document or a portion of an outer layer of the security document.
23.A security document according to one of claims 1 to 18 characterised in that the structure layer (16, 66, 96) is an inner layer of the security document or a portion of an inner layer of the security document.
Construction and Subsection 40(3): Clarity
While the rules of construction for an Australian patent specification are well summarized in Decor Corp v Dart Industries 13 IPR 385, recently the correct application of these rules to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70; 81 IPR 228 at [118] – [120]:
"the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear ... while the claims define the monopoly claimed in the words of the patentee's choosing, the specification should be read as a whole ... it is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification ... terms in the claim which are unclear may be defined or clarified by reference to the body of the specification"
Also relevant to the application of the rules of construction are the comments made by Middleton J in Eli Lilly and Company Limited v Apotex Pty Ltd [2013] FCA 214, 100 IPR 451 at [139]:
"It is well settled that the Court should, from the outset, approach the task of patent construction with a generous measure of common sense. The Court must place itself in the position of a person skilled in the relevant art, being the subject matter of the patent. From this perspective, the patent is to be read as a whole, in the context of the specification and in light of the prevailing common general knowledge and state of the relevant art at the priority date."
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).
Before dealing with the substantive clarity issues I point out that the claims contain numerous references to items depicted in the drawings. None of these references expressly identify a feature in a limiting manner. As such, I do not consider these references to place any limitation on the construction of the claims.
Claim 1
The opponent presented extensive submissions in regard to an alleged lack of clarity in relation to claim 1, a proportion of which had no basis in the SGP. Regardless, I consider the construction of the relevant features is necessary as part of this decision. Thus, I will individually address each of the particular aspects of the construction of claim 1 that are in dispute.
The feature “and contains an item of alphanumeric and/or graphic information”
The first part of claim 1 is as follows:
A security document comprising a carrier substrate and a transparent security element which is arranged in a window or in a transparent region of the carrier substrate and which has a transparent structure layer and a diffractive relief structure shaped into a first surface of the structure layer,
wherein in a first region of the structure layer a first relief structure is shaped into the first surface of the structure layer, which is in the form of an asymmetrical diffractive relief structure with a period length of up to 20μm and contains an item of alphanumeric and/or graphic information…
The claim begins by defining a security document with a carrier substrate and a transparent security element arranged in a window or transparent region of the carrier substrate, also having a diffractive relief structure. The claim then discusses a first region and defines features that are part of that first region including an asymmetric diffractive relief structure shaped into a first surface of the structure layer. The claim states that there is also the feature of alphanumeric and/or graphic information present.
The opponent has construed the claim to consider that only the asymmetric diffractive relief structure itself contains the information. This is consistent with embodiments 1 and 2 discussed above. Responding, the applicant submitted that while there may be some ambiguity on the face of the claim, the scope of this feature can be ascertained by reference to the specification. In particular the applicant submits that “and contains” refers to:
“… the [transparent] structure layer and therefore covers the possibility that the alphanumeric and/or graphical information is formed by the relief structure or is separate from the relief structure”.
I also note in their written summary of submissions, the applicant submitted that:
“…the claim requires that the transparent security element contains an item of alphanumeric and/or graphic information.”
The applicant’s submissions essentially rely upon embodiment 3. Reading the specification as a whole and considering each of the embodiments, it appears that alphanumeric or graphical information may be contained within a relief structure (embodiments 1 and 2) or separate from the relief structure (embodiment 3). Embodiment 3 relates to a situation whereby graphical information “is arranged at a suitable spacing from the surface of the carrier” (page 21 lines 30-32).
Therefore it does not appear reasonable to consider that the location of the phrase “and contains” immediately after the recitation of the relief structure limits the location of the information to this relief structure as suggested by the opponent. Instead it appears appropriate to consider that the “and contains” aspect of the claim is intended to relate to the first region of the transparent structure layer. In this sense as discussed above, a first region is provided, and then a list of features characterising that first region follows, the alphanumeric and/or graphical information being one of those features.
I also note that such a construction of the claim is consistent with the claims as a whole because dependent claims focus upon particular aspects of the three embodiments. See for example: claim 2 which discusses features related to embodiments 1 and 2; and claim 14 which discusses features related to embodiment 3. In this regard, it is clear that the intent of claim 1 is not to limit the location of the alphanumeric or graphical information to being formed by the relief structure.
As such, I consider it reasonable to construe the claim such that that the security document contains alphanumeric or graphical information that is contained within the first region of the structure layer of the security document.
I therefore find that the claim is clear in regard to this feature.
Incident light and the front and rear views
The opponent submits that the term “incident light” could be interpreted to mean light incident at any angle. In this regard it is the case that the claim does not explicitly specify a particular direction and orientation from which the information is to be viewed from front and rear views such that the claimed effect is observed.
I do not consider that these terms render the claims unclear. The only reasonable construction to place upon the angle of incident light is reflected in the submissions of the applicant which state:
“In the context of the claim there is no doubt that “incident light” is light incident upon the relief structure that makes the optical effect visible”.
In accordance with the applicant’s submissions, I consider that the claim is directed to light incident at a particular angle such that the relevant information/optical effect is viewable at a particular viewing direction in front and rear view. In regard to this viewing direction, when reading the specification as a whole it is clear that the front view and rear view are intended to be defined with respect to each other as forming substantially perpendicular views of the front and back of the security element. Here I reproduce figures 4a and 5a which show complementary front and rear views. These figures show that front and rear views of the security element involve viewing at a substantially perpendicular angle.
I therefore find that the claim is clear in regard to these features in that the angle of incident light is that at which the optical effect is visible in front and rear views, the angle being the same for front and rear views. The front and rear views are views at an angle substantially perpendicular to the security element.
The feature wherein “the information visible to the viewer on the front side and/or rear side is not merely a laterally reversed representation of the respective item of information visible on the opposite side”
The opponent submits that the negative claiming style used in claim 1 renders the scope of claim 1 vague and unclear. In particular the opponent submits that:
“…it is not clear to what is considered to be ‘not merely a laterally reversed representation’, particularly when it is read in combination with the other limitation that “the first relief structure in incident light produces an optical effect which is different in the front view and in the rear view”
The opponent essentially submits that there are three possible interpretations to the phrase “not merely a laterally reversed representation” being:
1. That the information visible to the viewer from one side must be a laterally reversed representation of the same information on the other side, and must have some other difference (basis for this is the second embodiment)
2. That the information visible to the viewer from one side is different information from the information visible to the viewer on the other side and is not a laterally reversed representation (basis for this is the first embodiment)
3. That the information visible to the viewer from one side is this same as the information on the other side and is not a laterally reversed representation, but has some other difference (basis for this is the third embodiment)
On this basis the opponent suggest that the claim has contrary interpretations and thus lacks clarity. In response the applicant suggested that the features should be construed as follows:
“The wording “not merely a laterally reversed representation” is a limitation placed on the preceding wording of “an optical effect which is different in the front view and in the rear view”. The wording is clearly understood to mean that the difference in the optical effect between the front view and the rear view is something more than just a lateral reversal. This does not exclude that it may include a lateral reversal. Thus the correct interpretation is that the difference in optical effect may be something other than a lateral reversal or it may be a lateral reversal, but if it is a lateral reversal it must also be something else.”
I am satisfied that each of the three interpretations is consistent with the broad interpretation provided by the applicant. Thus the three embodiments present no inconsistency. The feature claims a broad effect whereby information visible on one side is simply something other than a mere lateral reversal of the information visible on the other side. When considering the guidance provided in Monsanto Co v Commissioner of Patents, it seems a straight forward exercise for a skilled person to ascertain whether what he proposes to do falls within the ambit of the claim. The person need only ascertain if their effect is something other than a mere lateral reversal. In this regard I find the claim is clear.
Further in relation to the claimed effect, the opponent submits that claim 1 is not clear as to how the result whereby “information visible to the viewer on the front side and the rear side is not merely a laterally reversed representation of the respective item of information visible on the opposite side”, can be achieved when the claim comprises only a first asymmetric diffractive relief structure.
As I have already discussed above, I consider that the intent of the claim is to be construed broadly to include the various asymmetric diffractive relief structures depicted in embodiments 1, 2 and 3. Regarding embodiment 3, the effect of the arrangement described is that an image or graphics will stand out or hover over or under the surface of the document depending on its position with respect to the diffractive structure. In this respect, information visible on the front side is not merely a laterally reversed representation of the respective item of information visible on the other side. If the single diffractive relief structure of claim 1 is of the saw-tooth type depicted in the first two embodiments whereby the structure contains alphanumeric or graphic information and no other relief structures are present, then the structure will produce an image which is visible from one side. I consider that when viewed from the other side the same structure will be visible to some degree. This is in accordance with Dr Pizzanelli in DJP #1 at [38] where it was state that this information will be “almost imperceptible”.
I therefore find the claimed effect, whereby the first asymmetric diffractive relief structure produces and optical effect different in front and rear views such that the information visible to the viewer on the front side and/or rear side is not merely a laterally reversed representation of the respective item of information visible on the opposite side, clear. In accordance with the above discussion the feature can simply be construed as a first asymmetric diffractive relief structure which produces different optical effects in front and rear view such that information visible to the viewer in front and rear view is simply something other than a mere lateral reversal.
The term and/or in the phrase “…information visible to the viewer on the front side and/or the rear side…”.
The opponent submits that claim 1 also lacks clarity in regard to the use of “and/or”. The applicant suggest that:
“The term must be read as part of the claim as a whole, or at least in relation to the rest of the term. The term continues to make reference to “on the opposite side”. The claim is clear in meaning that whichever side is viewed (front or rear) the optical effect is different from what is viewed on the opposite side.”
I accept the construction applied by the applicant. The claim simply means that whichever of the sides is viewed, be it front or back, the optical effect produced means that what is viewed on one side is something other than a mere lateral reversal of the information visible on the other side. In other words, the same information might be visible on both sides but not a lateral reversion, or different information might be visible. This is consistent with the construction applied above to the claimed effect.
I therefore find claim 1 clear in regard to this phrase.
Summary: Claim 1
In accordance with the above discussion I find claim 1 clear. In summary I list my construction of the features that were disputed.
·The security document contains alphanumeric or graphical information that is contained within the first region of the structure layer.
·The angle of incident light is the angle at which the optical effect is visible in front and rear views, the angle being the same for front and rear views, whereby the front and rear views are views at an angle substantially perpendicular to the security element
·The first asymmetric diffractive relief structure produces different optical effects in front and rear view such that information visible to the viewer in front or rear view is something other than a mere lateral reversal of the information visible in the other view.
Claim 5, 7 and 8
The opponent submits that the claims are unclear because they recite ranges in addition to particular values. For example, claim 5 includes the feature wherein “the raster width is <300μm, in particular being 50μm”. Similar features are present in claims 7 and 8. In this regard they submit that it is unclear whether the range is being claimed or the particular value.
I see no problem with these claims. The style of drafting is simply an alternative to a claim that uses “or” to define optional features. In effect, the claims must be construed to cover their broadest range.
The opponent also submitted that claim 7 was not clear because it does not define how the blazed grating is achromatic. The opponent’s expert witnesses discuss this claim at DJP #1 at [72-75] and BAH #1 at [150]. They suggest that achromatic blazed gratings are known in the art and may be formed by varying the periods within a grating such that first order diffractions for different wavelengths are diffracted in similar viewing directions. Dr Pizzanelli also suggests at [74] that an achromatic effect is observed when the grating period is large in as much as the structure no longer acts as a blazed grating but as a series of mirrors with no particular wavelength variability. It is this mechanism which is said by Dr Pizzanelli to operate at the higher end of the ranges claimed in claim 7. Another means for generating an achromatic blazed grating is described in exhibit BAH-22 (Non-standard diffraction structures for OVD’s, Staub et. Al., Proceedings of SPIE, VOl. 3973 (2000)) at page 195, whereby an achromatic blazed grating may be formed using an appropriately chosen asymmetric profile shape.
The specification at page 5 lines 13 to 27 describes an achromatic blazed grating:
“On a blazed grating, in dependence on the grating constant d, the wavelength λ, and the diffraction order n, there is the following relationship between the entrance angle θin and the exit angle θout:
sin θout = sin θin + n * λ d
In other words, polychromatic light, such as for example daylight is broken down into its basic colours by diffraction at the blazed grating. By virtue of the choice of the grating constant d however the blazed grating can be in the form of an achromatic blazed grating in which the coloured rays at least of the first diffraction order are brought together again in a viewing angle range and thus polychromatic light again issues from the blazed grating. In that way, about 90% of the incident light can be diffracted in the form of a focused beam whereby the image effect is of a particularly high-contrast nature. It is from that property that the name of the grating is derived.”
Considering the discussion in the specification and the nature of achromatic blazed gratings discussed by the opponent I find the claim clear. An achromatic grating is one where the intensity distribution across an angular range is relatively independent of wavelength. Selecting a relatively large grating constant as defined in the claim appears to simply minimise the diffractive effect such that the grating operates more like a mirror. In this regard, the effect observed will have achromatic characteristics. Given this I consider claim is simply limited by particular ranges of grating constant and profile depth.
Therefore I find that claim 5, 7 and 8 are clear.
Claim 16 and 17
The opponent submitted that there is no antecedence to the “third relief structure” in claims 16 and 17 as the claims appended to claim 14 which does not contain a third relief structure. In this regard, it is claim 15 that introduces a third relief structure. I consider it clear that it is to this claim that claims 16 and 17 are to append. I do not see any other claim to which these claims can append. Therefore the claims are clear.
Claim 18 and 19
The opponent submitted that there is no antecedence to the “third region” in claims 18 and 19 as the claims appended to claim 14 which does not contain a third region. In this regard, it is claim 15 that introduces a third region. I consider it clear that it is to this claim that claims 18 and 19 are to append. I do not see any other claim to which these claims can append. Therefore the claims are clear.
Subsection 40(3): Fair basis
The tests accepted in LockwoodSecurity Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 69, 98-99 as being relevant to the consideration of fair basis is:
…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].
At the hearing the opponent pressed two allegations of a lack of fair basis of claim 1. A first submission simply related to the alleged lack of clarity in relation to the phrase “not merely a laterally reversed representation”. I note that this allegation does not appear in the statement of grounds and particulars. Regardless, I see no basis to consider that this feature renders claim 1 as lacking fair basis. As discussed above I found the claimed feature clear. There are three clear disclosures of this feature in relation to the particular described embodiments. I see no possible constructions of this feature that travels beyond the subject matter described. Thus I find claim 1, and therefore all claims, fairly based in regard to this feature.
A second submission of the opponent in relation to claim 1 alleged that:
“…the application does not disclose how the result is achieved merely by a first ‘asymmetric diffractive structure’… The application only discloses providing the optical effect by having a second relief structure, which is described in claim 2. Claim 1 therefore extends beyond the disclosure of the specification and is not fairly based.”
I initially refer back to my construction of claim 1 whereby I indicated that the claim was to be construed as including the type of asymmetric diffractive relief structure described in the third embodiment (Fresnel lens/mirror). In this regard and contrary to the opponent’s submission above, the claimed effect can be achieved using a single asymmetric relief structure (Fresnel lens/mirror) if the alphanumeric or graphical information is located at a suitable spacing from the diffractive structure according to its focal length.
It is also the case that within the scope of claim 1 is the situation whereby alphanumeric or graphical information is formed as part of a single saw-tooth shaped diffractive relief structure, with no other relief structures present. In such a situation, it is clear that incident light will result in information being visible in a first front/rear view. It follows that upon viewing from the opposite side, this information will be “almost imperceptible” as identified by Dr Pizzanelli in DJP #1 at [38].
I consider the fact that the information is “almost imperceptible” in opposite view relates to a situation whereby information is visible to some degree. Furthermore, due to the dramatic difference in brightness when viewing this single structure in front and rear views, the claimed optical effect is achieved. The application describes such an arrangement by way of embodiment 2. When viewing from one side, one of the relief structures of embodiment 2 will “light up” while the other appears darker. The relief structures will then reverse their effect when the structures are viewed from the other side. In this regard, the features produce an effect of contrast reversal whereby information visible on one side is something other than a mere lateral reversal of the information visible on the other side.
Importantly the specification further discusses a variation to this embodiment on page 19 at lines 27-31 whereby one of the relief structures is an asymmetrical relief structure and the other is a surrounding symmetric relief structure, matt structure or flat surface (my emphasis). When a relief structure is simply a flat surface (for example a surface of the transparent security element) then a single asymmetric relief structure can still achieve the claimed effect.
Therefore claim 1 finds real and reasonably clear disclosure in the description as a single asymmetric grating will, to some degree, be visible in front and rear view thus achieving the claimed effect. As claim 1 is fairly based it follows that the dependent claims are also fairly based.
Subsection 40(2)(a): Full Description
The test for sufficiency of description is set out in the High Court decision in Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd ( 2001) HCA 8 at [25]:
"… will the disclosure enable the addressee of the specification to produce something within each claim without new inventions or additions of prolonged study of matters presenting initial difficulty?"
A first submission of the opponent under this ground related to the issues discussed above under fair basis. Here the opponent submitted that:
“To provide such the optical effect described in claim 1 using only a first relief structure as shown in Figure 3a, a skilled addressee at the Priority Date would be expected to undertake new inventions or additions or prolonged study of matters presenting initial difficulty.
I do not consider that this issue renders the specification as not being fully descriptive. According to the test described in Kimberly-Clark, the disclosure need only enable the specification to produce something within each claim. I consider that the specification achieves this by way of the embodiments discussed above in relation to fair basis.
Other allegations in regard to a lack full description presented by the opponent were as follows:
· “An inherent feature of the invention according to claim 2 is that the image changes when the security document viewed from either side is tilted. This is not described in the specification, and so the specification does not describe the invention fully.”
· “Claim 6 is not fully described by the specification. The specification defines, at page 3, lines 24 to 27, an ‘asymmetrical diffractive relief structure’ as a structure with a sawtooth-shaped periodic configuration, wherein the two sawtooth flanks of a period differ significantly from each other in terms of their slope. Claim 1 recites that the structure layer contains a first relief structure in the form of an asymmetrical diffractive relief structure. Dependent claim 6 then recites that the first relief structure may be a blazed grating. It is known in the art that a blazed grating need not have a sawtooth profile. However, the specification does not provide any teaching as to how non-sawtooth blazed gratings may be used with the invention.”
· “Claim 10 is not fully described by the Application. There is a lack of clear explanation how to produce multiple coating in selected regions that are in exact register to the grating areas. While multiple coatings are known in the prior art, in practice, producing these coatings in selected regions that are in exact register to the areas of the grating near impossible to accomplish.”
Regarding the first point, I do not see why there needs to be any discussion of tilting in the specification. As I discussed earlier in relation to the ground of clarity, front and rear views should be construed as views at an angle substantially perpendicular to the security element. It follows that tilting is not claimed and thus I see no requirement that such effects be described in the specification.
Regarding the second point I see no requirement that a non-sawtooth blazed grating be described in the specification. Similarly to the discussion above, the specification enables the addressee of the specification to produce something within claim 6. In this regard the specification describes the best method by way of a saw-tooth grating which may be blazed.
Regarding the third point, the specification clearly describes coating a first region with a first metallic layer and a second region with a second metallic layer (page 6a). There is no limitation in the claim to coating regions in “exact register” as identified by the opponent. I see no reason to consider that a person skilled in the art would not be able to coat two different regions with different metallic layers.
In accordance with the discussion above, I find the specification satisfies the requirements of s40(2)(a).
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 prior art information within the prior art base. 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.”
Similarly, the Full Court in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70 at 181 said (citing Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40):
“If the prior art discloses some but not all integers of a claimed patent to a product, such as a combination, there is anticipation if the skilled addressee would add the missing information as a matter of course and without the application of inventive ingenuity or undue experimentation.”
The following documents were pressed by the opponent in its submissions as depriving the claimed invention of novelty:
· D1: US 5101184 A (Antes) 31 March 1992
· D2: WO 1997/019821 A1 (Landis & GYR Technology Innovation AG) 5 June 1997
· D3: abstract of JP 2000206320 A (Toppan Printing Co Ltd) 28 July 2000
· D4: US 5461239 A (Atherton) 24 October 1995
· D5: US 2005/0068624 A1 (Schilling et al.) 31 March 2005
· D10: AU 2003283371 A1 (OVD Kinegram AG) 10 June 2004
D1: US 5101184
According to the opponent, document D1 (provided as exhibit DJP-2) discloses all of the features of claim 1. The opponent submits that:
“D1 describes a diffraction element 2 divided into at least two surface portions 3, 3’, in the manner of a mosaic, whereby the division is of a graphic nature (column 3, lines 27-29). The surface portions 3,3’ are asymmetric diffractive relief structures having opposite orientations. The diffraction element may be embossed or engraved directly on a document 1 comprising a thermoplastic synthetic material (column 2, lines 47-49), and the optical effect produced by the diffraction element ‘can be observed via reflection and via transmission’ (column 3, lines 13-15). The document 1 and diffraction element 2 would in that case be transparent. The spatial frequency of the relief structure is at least 50 lines per mm, i.e. the period length is less than 20μm. The optical markings can be in the form of numbers, letters or other graphical symbols (column 5, lines 13-15). The relief structures are covered in an optically active coating.
The diffraction element of D1 is therefore a ‘twin blazed grating’ structure which is very similar to the embodiments of Figures 1-5 and Figures 7a, 7b, and would inherently produce the same optical effect as that claimed in claim 1 when located in a widow or a transparent region of the carrier substrate of the security document.”
The applicant argues that features of claim 1 are not disclosed in the document. In this regard, the applicant submits that document D1 does not disclose:
· An asymmetric diffractive relief structure located in a transparent region or window of the carrier substrate of the security document.
· The first relief structure in incident light produces an optical effect which is different in the front view and in the rear view such that the information visible to the viewer on the front side and/or the rear side is not merely a laterally reversed representation of the respective item of information visible on the opposite side. In this regard the applicant suggests that D1 only teaches viewing from a single side.
The applicant also submits that the opponent’s experts concede that there is no explicit disclosure of the relief structure of document D1 being located within a transparent window or region (BAH-2 at [31] and DJP-1 at [50]).
I turn to the particular disclosure of document D1 which describes diffractive element 2, by way of figures 1 and 2. As suggested by the opponent, the diffraction of incident light at the relief structure 4, “can be observed via reflection and transmission” (column 3 lines 13-15). It must then follow that observing diffraction in transmission teaches a transparent diffractive element. Importantly, the document also discloses that the relief structure may be embossed or engraved directly on a document 1 comprising a thermoplastic synthetic material (column 2 lines 47-49). The document adds that in the case of transmission, “the choice of material for the document 1, and if applicable, for the support 5 is very much limited” (column 3 lines 15-17).
The document clearly and unmistakably teaches a transparent diffractive element. By describing the use of a support 5 as optional in the case of a transparent element, the document teaches formation of the transparent element directly on a thermoplastic synthetic material by embossing or engraving. I consider a skilled reader would appreciate this means that the transparent element would be formed in a transparent region of a transparent thermoplastic synthetic document. This is because the described security document would inevitably need to be transparent such that the diffractive element was itself transparent. Therefore I consider that document D1 discloses the feature whereby an asymmetric diffractive relief structure is located in a transparent region of the carrier substrate of the security document.
I regard to the claimed effect I again refer to the disclosure that the relief structure 4 may be viewed in transmission mode (column 3 lines 13-15). The applicant submits that there is no evidence that a skilled reader would understand D1 to include viewing from front and rear, and thus there is no inherent disclosure of the claimed effect. In other words the applicant submits that D1 only teaches viewing from a single side.
I first note that claim 1 does not include within its scope, the actual viewing of a document from front and rear sides. Instead, the relevant feature is simply that a first asymmetric diffractive relief structure produces different optical effects in front and rear view such that information visible to a viewer in front or rear view is something other than a mere lateral reversal of the information visible in the other view. Therefore, the relevant question to ask in regard to the disclosure of this feature is: Do the structural features described by document D1 inevitably produce the claimed effect?
Having two transparent layers, figure 2 depicts a first relief structure (item 3). This first relief structure produces an optical effect in transmission which is different in the front view and in the rear view (by way of the saw-tooth pattern in layer 3). Due to the presence of the second saw-tooth pattern (see layer 3’) which is a mirror image of the first (see angles α and – α), graphical information (being the graphical division of neighbouring structures 3 and 3’) visible to a viewer in the front view will be different to that visible in the rear view. Therefore I consider the claimed effect to be inherently disclosed by the described structural features of document D1.
While not addressed by either party, I fail to see a disclosure of a reflective transparent (semi-transparent layer) layer adjoining the structure layer, or neighbouring transparent layers with refractive index difference > 0.2. After indicating that relief structures can be observed in reflection and transmission (column 3 lines 13-15), document D1 broadly describes an arrangement of a diffractive security element as depicted in figures 1 and 2. Document D1 then discusses in detail, an embodied operation in a reflection mode with an opaque substrate (from column 4 lines 14), however there is no disclosure of a reflective transparent layer.
I am satisfied that document D1 discloses the arrangement depicted above operating in a manner having two transparent layers (layer 3, 3’ and the optically active coating layer described in column 3 line 20, covering 3 and 3’) as the document clearly teaches that the relief structure 4 can be viewed in transmission. However there is no clear and unmistakable direction to a particular refractive index difference between these transparent layers.
Therefore I find claim 1 novel in view of document D1. Dependent claims 2-23 add further features to those defined in claim 1 and are thus also novel in view of D1.
D2: WO 1997/019821 A1
According to the opponent, document D2 (provided as exhibit DJP-3) discloses all of the features of claim 1. The opponent submits that
“It discloses an optically variable surface pattern suitable for use in security documents. The surface pattern is formed by an asymmetrical saw-tooth shaped twin blazed grating structure which is very similar to that of the embodiments of Figures 1-5 and 7a, 7b of the Application (see Fig 5 of D2). Reference is also be made to at least page 4, lines 2-25:
…
The optical effect produced by the twin blazed grating structure of D2 is also similar to that produced by the security element of Figures 1-5 and 7a,7b of the Application. Reference is also made to page 13, lines 23-31:
…
While D2 does not explicitly disclose that the optically variable surface pattern is located in a window or transparent region of a security document, it is clearly capable of being so disposed which would result in a security document as claimed in claim 1.
As noted by the applicant, there is no disclosure of the optically variable surface pattern of document D2 being located in a transparent window of a security document. Furthermore I cannot find a disclosure of a transparent security element. Instead, the document only teaches that the optically variable surface pattern operates in reflection. In this regard I refer to figure 5 of document D2 which depicts the layer structure of the described asymmetric grating.
Figure 5 shows how the diffractive structure described in document D2 comprises a composite laminate with lacquer layers 14 and 16 and a reflection layer 15. Being structured in this manner the optically variable structure does not include a reflective transparent layer or adjoining transparent layers. It follows that that the described structure does not produce an optical effect that is different in front and rear views as required by the claim.
Therefore I find claim 1 novel in view of document D2. Dependent claims 2-23 add further features to those defined in claim 1 and are thus also novel in view of D2.
D3: abstract of JP 2000206320
According to the opponent, document D3 (provided as exhibit DJP-4) discloses all of the features of claim 1. The opponent submits that according to the abstract of D3 and the accompanying figure:
“Two kinds of blazed gratings A, B are used and two grating have the same shape and are different in a direction by 180 deg. And these two kinds of gratings are combined and arranged on the surface of a board to express a pattern (letter ‘T’). When the diffraction pattern is irradiated from above and below by illuminating light, an observer can observe a negative-positive reversed different pattern (The letter ‘T’ is brilliant or its reverse). Thus, the diffraction grating pattern has anisotropy so that various expression can be made; Accordingly, even with the same display pattern, the patterns can be differentiated so as to contribute to giving security’.
I do not see a disclosure of the two blazed gratings of document D3 being located in a transparent window of a security document. Furthermore there is no disclosure of the gratings being part of a transparent security element. Instead, the document only teaches that blazed gratings A and B are arranged on a board.
At best I consider that the document only suggests viewing in reflection from one side. Here, the described directions “above” and “below” seem to mean incident light from an elevated and declined position whereby viewing is of reflection perpendicularly to the device. Further, the document does not disclose a reflective transparent layer or adjoining transparent layers. It follows that that the described structure does not produce an optical effect that is different in front and rear views as required by the claim.
Therefore I find claim 1 novel in view of document D3. Dependent claims 2-23 add further features to those defined in claim 1 and are thus also novel in view of D3.
D4: US 5461239
100.According to the opponent, document D4 (provided as exhibit DJP-5) discloses all of the features of claim 1. The opponent submits that document D4 discloses a:
“… diffractive structure in the form of a multiple blazed grating which may be employed in security cards and documents (see abstract). Multiple diffracted beams are produced by particular surface portions of the grating. The diffracted beams may be produced asymmetrically about an axis perpendicular to the plane of the grating. We make particular reference to column 14, lines 13 to 19, which describes ‘One important variation which applied to the multiple beam gratings is that the diffracted beams produced by a multiple beam grating need not be constrained to all lie in a common plane – in other words the diffracted beams may be produced in any direction’.
The diffractive structure of D4 can represent alphanumeric and/or graphic information in the form of a bar code. The diffractive structure may be reflective or transmissive (see Figs 1a and 1b), and so the diffractive structure can be located in a window of a security element. The optical effect produced by the multiple blazed grating of D4 is described with reference to Figs 3-7 and is similar to that produced by the security element of Figures 1-5 and 7a, 7b of the Application.”
101.The applicant submits that the entire description is directed to a machine readable optical memory with no discussion of information visible to a viewer, and subsequently no disclosure of the claimed optical effect. The applicant also submits that there is no disclosure of a transparent security element arranged in window of a security document.
102.I have reviewed the document, particularly the aspect relating to a diffractive structure that may be reflective or transmissive by way of figures 1a and 1b. Here figures 1a and 1b depict the general principle behind diffractive bar codes (column 7 lines 18-44).
103.These figures describe a data card or document 10 containing a diffractive barcode. The diffractive bar code 11 is made up of a number of optically diffractive strips 12, each of which is capable of diffracting all or part of an incidence beam into diffracted beams 14. Non-diffractive strips 16 prevent light from reaching a detector. Further, to make these devices difficult to copy the specification discusses that sophisticated diffractive relief structures can be used (column 7 lines 52-55). The document then proceeds to such describe such relief structures in the form of multiple reflective blazed gratings (including asymmetric gratings) and then suggests that “it should be appreciated that the multiple blazed grating concept can also be implemented in the form of transmissive gratings” (column 22 lines 55-68).
104.Also discussed in document D4 are methods of making such diffractive barcodes. For example at column 35 lines 8-65, a reflective diffractive barcode is discussed as being formed by optical writing of an opaque strip in a photosensitive layer which covers a diffraction grating of the type described in the document (multiple blazed grating). The document adds that such a method can be performed in a transmissive photosensitive medium alternatively to a reflective medium with the only difference being that the diffractive layer is transmissive. The document further adds at column 36 lines 2-6 that the medium is incorporated into a data card.
105.I consider that the document, particularly the disclosure of columns 35 and 36 identified above, provides clear and unmistakable direction to a transparent security element comprising an asymmetrical diffractive relief structure of period length up to 20μm, arranged in a transparent region of a carrier substrate. This is because a transparent security element incorporated into a card will necessarily be within a transparent region. However, I agree with the applicant that there is no clear disclosure that there is information that would be visible to a viewer as the document is entirely directed to machine reading.
106.As with document D1, I fail to see a disclosure of a security element comprising a first transparent structure layer with an adjoining layer being a reflective transparent layer (semi-transparent layer) or a transparent layer with refractive index difference > 0.2. Furthermore, there is no clear and unmistakable direction in document D4 to a particular asymmetric diffractive grating arrangement that would produce the requisite claimed effect. In this regard there is no disclosed arrangement whereby incident light at a particular angle generates optical effects such that information visible in rear and front views respectively are not mere laterally reversed representations.
107.Therefore I find claim 1 novel in view of document D4. Dependent claims 2-23 add further features to those defined in claim 1 and are thus also novel in view of D4.
D5: US 2005/0068624
108.According to the opponent, document D5 (provided as exhibit DJP-6) discloses all of the features of claim 1. The opponent submits that:
“D5 discloses an optically variable surface pattern which is suitable for use in security documents (see paragraph [0002]). In paragraph [0010] for example, D5 describes ‘[a] surface pattern which has an optical diffraction effect includes at least two representations which are arranged in a mutually nested relationship on the surface pattern. There representations include light-diffracting, reflecting structures which under ordinary lighting conditions diffract impinging light in different directions so that a viewer can only ever see on the of the representations. By turning and/or tilting the surface pattern or by varying the angle of view, the viewer can make the one representation or the other into the visible representation’.
While D5 does not explicitly disclose that the optically variable surface pattern is located in a window or transparent region of a security document, it is clearly capable of being so disposed which would result in a security document as claimed in claim 1.”
109.There is no disclosure in the document that the optically variable surface pattern is part of a transparent security element. Similarly, as submitted by the applicant, there is no disclosure suggesting location of the surface pattern within a transparent window or region. In this regard the document only describes a reflecting, opaque structure. If follows that there is also no disclosure of an optical effect being produced by the structure such that different information is visible on the rear side of the surface pattern.
110.Therefore I find claim 1 novel in view of document D5. Dependent claims 2-23 add further features to those defined in claim 1 and are thus also novel in view of D5.
D10: AU 2003283371
111.According to the opponent, document D10 (provided as exhibit BAH-9) discloses all of the features of claim 1. The opponent submits that document D10 discloses a diffractive Fresnel lens/mirror arrangement which produces the claimed effect via:
“… a layer arrangement producing diffractive optical effects and lens-type effects. On viewing the layer arrangement, one would see two diffractive patterns in different areas (page 1). If used to produce a lens like effect, the lens would be magnifying when viewed from one side, and de-magnifying when viewed from the other side (page 1). Particular reference is made to at least page 5, lines 8 to 15 and Figure 1b of D10, which describes ‘[i]t is further within the scope of the invention that the interface, at least over some of its are, has a reflectivity-enhancing layer, an expedient reflectivity-enhancing layer having a metallic layer, for example one produced by vapour-deposition. However, it is by all means conceivable to consider a transparent reflectivity-enhancing layer having an appropriately high refractive index, in which case, the later arrangement could be made transparent to a certain degree. Thin-film arrangement of known layer combinations or semiconductor layers could also be used’.”
112.I agree with the opponent to the extent that the document discloses a transparent security element in the form of a diffractive Fresnel lens/mirror arrangement including a transparent structure layer. This structure layer adjoins a transparent reflective layer or a second transparent layer with refractive index difference > 0.2 (page 4 line 31 to page 5 line 15).
113.However, at best the document only discloses that such a security element may be part of the security device by way of being applied as “a cover of an existing visible characteristic on the substrate” (page 8 lines 8-9). This does not amount to a direction to include the transparent security element in a transparent region of the carrier substrate of a security document. Importantly, I also note that the document does not disclose the claimed effect. This is because the document does not describe positioning alphanumeric or graphical information in such a way that would enable the Fresnel lens/mirror to produces different optical effects in front and rear view, such that information visible to the viewer in front or rear view is something other than a mere lateral reversal of the information visible in the other view.
114.Therefore I find claim 1 novel in view of document D10. Dependent claims 2-23 add further features to those defined in claim 1 and are thus also novel in view of D10.
Inventive Step
115.The test for obviousness was provided by Justice Aicken 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.”
116.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]?”
117.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).
118.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.
119.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.”
The problem
120.The specification at pages 1 and 2 discusses a range of prior art security devices for value bearing documents. I consider that it is clear that the range of devices used in such documents includes the use of windows, images, lenses, holograms and diffractive structures. It is then suggested (at page 2 lines 21-24) that the object of the present invention is to provide a security document which is inexpensive to manufacture and which solely by viewing a window of a security element deploys an optical effect which is striking to the observer and which is typical in respect of authenticity. The claimed invention appears to address this problem by way of providing a transparent security element which uses at least one asymmetric diffractive relief structure producing a particularly striking optical effect.
121.The opponent in their submissions, attempts to more narrowly define the problem as providing a security document with a transparent diffractive relief structure in a transparent window of a security document which deploys a striking optical effect. I do not consider this to be a reasonable formulation of the problem. In this regard, the known prior art includes a vast array of security elements that may be incorporated into a window. It appears that the opponent’s formulation of the problem including a diffractive relief structure has regard to the claimed solution. I am satisfied that the problem is that which is defined in the specification.
122.Furthermore, in accordance with the findings in AstraZeneca AB v Apotex Pty, there is no information forming part of the problem that is not s7 material. All of the aspects of the problem are known in the art by way of demonstration in the evidence filed. Thus it is appropriate to consider obviousness in light of the identified problem.
The hypothetical person skilled in the art
123.Given the problem formulated above, I consider that the person skilled in the art is a person working in the development and production of optically variable security devices for documents, in particular, those for use in windows of documents. I consider each of the experts is a person skilled in the art. The parties made a range of submissions in regard to the weight that should be given to the evidence of certain experts. To the extent that these submissions become relevant I will consider them as required.
The common general knowledge in the art
124.A definition of common general knowledge was provided by Aitken J in Minnesota Mining [1980] HCA 9 at [115]; 144 CLR 253 at 292:
“The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge.”
125.The applicant does not raise any particular submission that certain aspects of common general knowledge identified by the opponent do not form part of the common general knowledge. In regard to the evidence of Dr Pizzanelli the applicant makes the submission that:
“Pizzanelli does not provide any information on what would have been known to persons skilled in the art at the priority date so his declaration is not helpful in establishing the common general knowledge.”
126.Reviewing Dr Pizzanelli’s evidence I do not consider this to be so. For example at [54] of DJP #1, Dr Pizzanelli states:
“With regard to the additional coatings mentioned in claim 1 of the Application, namely a high-refractive index coating or a very thin metallic coating (such that a high level of transparency is retained), both the use of a high-refractive index material and/or a very thin metallic coating to enhance the diffractive efficiency of a grating structure are well known in the prior art and would have been so known at 14 June 2005.”
127.Additionally, the applicant noted that Dr Hardwick has a “close association with the opponent” questioning whether he can “give independent evidence”, and suggested that Dr Hardwick cannot be considered a non-inventive skilled worker. Given these points the applicant suggests his evidence should be given low probative weight. I accept that Dr Hardwick is a person skilled in the art and see no basis to question the independence of his evidence.
128.I will refer to relevant common general knowledge as required when considering inventive step.
The prior art base (ascertain, understand and regard as relevant)
129.The opponent relies on documents D1- D5 to establish obviousness by submitting that each of the claims lacks an inventive step over any of these documents considered individually, or in light of the common general knowledge. In this regard the opponent submits that to the extent that there are any differences between the documents and the claims, these differences would be obvious to the skilled person in light of common general knowledge. Curiously, the opponent does not raise document D10 in relation to inventive step, however I will address it for completeness.
130.According to subsection 7(3), documentary information relevant the assessment of inventive step must be information that the person skilled in the art, before the priority date of the claims, could be reasonably expected to have ascertained, understood and regarded as relevant.
131.In relation to ascertaining the documents, relevant evidence suggesting that they would have been ascertained is the following statement by the opponent’s expert Dr Hardwick in BAH #1 at [10]:
“Among the main resources I consulted since at least the early 1990’s were patent specifications. Both the remainder of the research and development team and I would consult patent specifications.”
132.The applicant does not provide any contrary evidence. Thus, I am satisfied that the patent documents would have been ascertained. I see no reason to consider that they would not have been understood.
133.As above, the problem to be solved by the independent claim is to provide a security document which is inexpensive to manufacture and which solely by viewing a window of a security element deploys an optical effect which is striking to the observer and which is typical in respect of authenticity.
134.Document D1 is directed towards a security element incorporated into a security document with engraved microscopic diffractive relief structures that can be viewed in reflection or transmission (column 2 line 36 to column 3 line 15). In this regard I am satisfied that the document would be considered by the person skilled in the art as relevant to the problem involving viewing in a window in that it discusses a transparent (transmissive) security element. Documents D4 and D10 are also directed to security documents having security elements and transparent regions. As such I consider these documents would have been regarded as relevant.
135.Documents D2, D3 and D5 discuss diffractive relief structures viewed in reflection. The documents do not consider viewing any optical effects of the security element by viewing a window. In this regard it does not appear that the documents contemplate transparency in any way. Therefore, I do not consider these documents would have been regarded as relevant to the problem addressed by independent claim 1. Consequently, documents D2, D3 and D5 do not form part of the prior art base for consideration of inventive step.
Was the invention obvious?
136.As discussed above, I consider that documents D1, D4 and D10 are documents that form part of the prior art base for the purpose of assessing inventive step.
D1: US 5101184
Claim 1
137.In accordance with my discussion above in regard to novelty, I consider that document D1 discloses all of the features of claim 1 except for either a reflective transparent (semi-transparent layer) layer adjoining the structure layer, or neighbouring transparent layer adjoining the structure layer wherein there is a refractive index difference > 0.2. Instead the closest teaching within document D1 is of two transparent layers (layer 3, 3’ and the optically active coating layer described in column 3 line 20, covering 3 and 3’), with no reference to particular refractive index differences.
138.As I understand the operation of a transparent diffractive structure, in order to see significant diffraction in transmission there should be a sufficient refractive index difference between the structure layer of the diffractive structure and the overlying layer. In other words, if the refractive indices of the diffractive structure and overlying layer were the same, then no diffraction would be observed in transmission. This overlying layer may be air or another transparent layer acting as a coating. Document D1 clearly discloses two transparent layers, one being the diffractive structure and one being a coating.
139.In support of my understanding, I refer to the evidence of the opponent’s expert Dr Pizzanelli who discusses transparent coating layers for transparent diffraction gratings at [34] and [54] at DJP #1 respectively:
“…the use of a coating with a high refractive index is well known in the prior art to preserve transparency, so that light incident on the front side of the security element and also the light incidence on the rear side of thereof is diffracted…”
…
“With regard to the additional coatings mentioned in claim 1 of the Application, namely a high-refractive index coating or a very thin metallic coating (such that a high level of transparency is retained), both the use of a high-refractive index material and/or a very thin metallic coating to enhance the diffractive efficiency of a grating structure are well known in the prior art and would have been so known at 14 June 2005.”
140.I consider the evidence supports my understanding that a high refractive index coating material is used in transparent diffraction gratings for the purpose of enhancing diffractive efficiency. Faced with the teaching of document D1 which simply lacks a particular refractive index difference between disclosed transparent layers, I consider the evidence demonstrates that it would have been a matter of routine for the person skilled in the art to provide a reasonably significant refractive index difference (of >0.2) between the two layers (layer 3, 3’ and the optically active coating layer described in column 3 line 20, covering 3 and 3’) such that the diffractive effect was readily visible. Without the selection of such a refractive index difference the diffraction effect of document D1 would be difficult to see in transmission.
141.In regard to an assessment of inventive step, the applicant makes a number of submissions that require consideration. First the applicant submits that the evidence of the opponent’s experts, Drs Pizzanelli and Hardwick is tainted by hindsight. Second, the applicant submits that obviousness of the present invention should be assessed in the following manner:
“The object of the invention is to provide a security document which solely by viewing a window of a security element deploys an optical effect which is striking to the observer. The observer is a person who will be a user of the security document, which in the context is likely to be a member of the general public. Thus, while the specification is directed to a person skilled in the field of optically variable security devices, the invention is directed to the so-called “man in the street”. Thus, what the “skilled addressee” may consider to be obvious must be tempered by how the “man in the street” may perceive the invention.”
142.Regarding this second submission, I do not see how such a consideration is relevant to inventive step. It is only necessary that inventive step be determined in the context of 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. I do not think it is relevant to give consideration to the “man in the street”.
143.Considering the allegation of hindsight, I tend to agree with the applicant that the evidence of the opponent’s experts does not appear to have been formulated in such a manner whereby experts have provided their opinions of a solution to the problem without knowledge of the claimed invention. However, in so far as the difference between claim 1 and the disclosure of document D1, I am not satisfied that this detracts from the evidence of Dr Pizzanelli. Document D1 discloses overlying transparent layers that must have a different refractive index. The purpose of a refractive index difference of >0.2 is to simply make an observed effect more striking. Faced with the problem of striking optical effects being visible in a window I think it is clear that the evidence of Dr Pizzanelli demonstrates that a person working in the development and production of optically variable security devices for use in windows of documents would select such a refractive index difference as a mere matter of design. Importantly I note that no evidence to the contrary is provided by the applicant.
144.Therefore I find that claim 1 lacks an inventive step in light of document D1 when read in light of the common general knowledge in the art.
Claim 2
145.In relation to claim 2, document D1 discloses a second relief structure (3’) in the form of a mirror image asymmetrical diffractive structure which is shaped into a second region of the first surface of the structure layer, wherein the second relief structure in incident light has an optical effect which is different in the front and rear view. Therefore claim 2 lacks an inventive step in view of document D1.
Claims 3-5
146.In relation to claims 3-5 and the formation of mutually interlocking rasters, the opponent submits that the feature is disclosed in document D1 by way of a division of the diffraction element into surface portions 3, 3’ in the manner of a mosaic, whereby the division is of a graphic nature (column 3 lines 27-29).
147.I consider that “mutually interlocking” is to be construed such that rasters are arranged in an alternating manner whereby a raster is interlocked on each side by a different raster. Such a structure may be “one-dimensional” whereby in one direction rasters alternate, or may be “two-dimensional” in a checkerboard type arrangement. While document D1 discloses the arrangement of 3, 3’ in a mosaic (which I construe as being arrangement of 3 and 3’ portions to produce an image primarily in a manner whereby a number of identical potions are neighbouring), I do not consider this amounts to a clear direction to the claimed interlocking arrangement. Further, there is no evidence to suggest that a person skilled in the art would use this teaching to arrive at the claimed invention.
148.Alternatively, Dr Pizzanelli in DJP #1 at [68] points to a number of prior art documents which are said to demonstrate that:
“Such division of the surface area of a diffractive security device is well known in the prior art and would have been so known at 14 June 2005.”
…
“Whilst all these examples pertain to image-switching devices that are situated on opaque substrates (rather than from opposite sides of a transparent substrate), I believe the advantages gained from dividing the images into mutually interlocking rasters would be obvious in the context of two images seen from opposite sides of a transparent substrate”.
149.While it may have been well known to form mutually interlocking rasters in an opaque device, there is no evidence to establish that it was known to form mutually interlocking rasters in transparent security elements. While in hindsight there may be clear advantage in doing so, there is a range of ways that a skilled person might create two images on opposite sides of a transparent security element (in addition to mutually interlocking asymmetric gratings) and as such I cannot consider that the person would have been directly led to the claimed solution. Therefore claims 3-5 involve an inventive step.
Claims 6-8
150.Claims 6-8 are directed towards the first and/or second relief structure being in the form of blazed gratings with particular parameters defined for the gratings. The opponent initially submits that document D1 discloses blazed gratings in the figures, having a grating constant less than 2μm (column 2 lines 60-61). I do not agree as the document simply discloses a grating frequency of less than 50 lines per mm which equates to a grating constant of 20μm.
151.In regard to being obvious features, the opponent points to declarations of Dr Pizzanelli and Dr Hardwick. In particular, according to Dr Hardwick in BAH #1 at [149]-[150] “…blazed gratings were well-known before the priority date” and “The ranges for grating constants are typical of those for diffraction gratings”. As an example of ranges Dr Hardwick points to document D1 which I note discusses grating constants that can be provided at column 1 lines 30-35:
“The relief structures can be provided with cross-sectional configurations of known periodic functions with spatial frequencies of over 10 lines per millimeter which are effective for the diffraction of visible light. Limits imposed in manufacture restrict the practically usable range to approximately 2500 lines/mm.”
152.A range of 10 – 2500 lines per mm corresponds to a grating constant from 0.4 – 100μm. Furthermore, document D1 and for that matter all of the cited prior art discussed above under novelty, show diffraction gratings with profile depths being of a similar magnitude as the grating period. No evidence to the contrary is provided by the applicant. Similarly to my finding in relation to claim 1, I do not think that the particular evidence of Dr Hardwick is tainted by hindsight so as to diminish it’s relevance to the claimed features. As such, I consider that in modifying gratings of document D1, the person skilled in the art would be directly led to try parameters within the claimed ranges as the claimed ranges encompass mere selections of commonly available ranges. Therefore claims 6-8 lack an inventive step in view of document D1.
Claims 9-12
153.These claims add the feature whereby the first surface of the structure layer (into which is formed a diffractive relief structure) is coated with a reflecting metallic layer. The opponent submits that “it was very well known before the priority date to coat embossed holograms and diffraction pattern with a thin reflective metallic layer”. In support Dr Hardwick cites documentary examples a first of which being the text book Optical Document Security, 3rd edition (2005) by Van Renesse, page 178 (exhibit BAH 23) which discusses the making of a diffraction pattern fully reflective by way of a metal coating. The opponent also points to document D10 which discusses metal coating of a Fresnel lens/mirror device as already discussed above.
154.While I accept that it was well known to coat a diffraction grating with an opaque reflective metallic layer, I see no reason why such a coating would have been applied to the invention described in document D1. As discussed above in relation to novelty, the description of the invention of document D1 that is relevant to the claimed invention is that which discusses the viewing of the diffractive element in transmission. It is this disclosure in combination with the described structural features that provides for disclosure of the claimed effect of claim 1 being information visible to the viewer on the front side and/or rear side is not merely a laterally reversed representation of the respective item of information visible on the opposite side.
155.Faced with the problem of providing a security document which is inexpensive to manufacture and which solely by viewing a window of a security element deploys an optical effect which is striking to the observer and which is typical in respect of authenticity, I see no reason why the person skilled in the art would modify the relevant teaching in document D1 by adding a reflective layer. In this regard the document appears to teach away from such an addition as it describes viewing the grating either in transmission, or in reflection from only one side. Therefore I find that claims 9-12 involve an inventive step.
Claim 13
156.Claim 13 describes that the first surface of the structure layer is coated at least region-wise with a dielectric HRI layer with a high refractive index. The opponent submits that semi-transparent HRI overlays were well known at the priority date. For similar reasons as that discussed in relation to claims 9-12, I consider document D1 teaches away from the addition of a semi-transparent layer. Therefore I find that claim 13 involves an inventive step.
Claim 14
157.Claim 14 describes that the first relief structure or the second relief structure is an asymmetrical relief structure which is formed starting from a reference point in at least two directions with changing spatial frequency or depth and to which a reflection layer is applied. The opponent submits that this feature appears to be attempting to cover the third embodiment. The opponent’s submission in regard to document D1 is simply that the feature is disclosed at column 5 lines 51-52 which states that “it is possible for at least one relief structure 4 to be provided with a modulated spatial frequency fo with a spatial frequency amplitude A”.
158.At best this disclosure appears to teach modulation of spatial frequency in a single direction and in the context of a reflective diffractive element. In this regard there is no disclosure of the claimed feature. The opponent provides no further evidence in relation to document D1 to demonstrate that the person skilled in the art would be directly led to the claimed feature. Therefore I find that claim 14 involves an inventive step.
Claims 15-19
159.Claim 15 is directed towards a third region. In this regard I consider that the claim must also be directed towards first and second regions and subsequently appends, in its broadest scope, to claim 2. The claim refers to a third relief structure being shaped into the first surface of the structure layer, wherein in incident light the structure produces optical effects which are the same in front and rear view.
160.Dr Hardwick in BAH #1 at [157] states that “it was well known at the priority date that a matt structure in a window would produce the same optical effect from a front view and a rear view, and I consider it would have been obvious to combine a matt structure with a blazed grating at the priority date”.
161.While the effect of a matt structure may have been well known in addition to its combination with a grating, I see no motivation to modify the teaching of document D1 to include a third relief structure as part of the first surface of the structure layer. Therefore I find that claim 15 involves an inventive step. Claims 16-19 add further features to claim 15 and are therefore also inventive.
Claims 20-23
162.Claims 20 and 23 describe the additional features to that of claim 1 whereby: the security document (the claim refers to “the security element” but it is clear that reference is to “the security document”, see page 10 lines 4-6 of the specification) is a multi-layer film body with a transparent carrier layer; and the structure layer is an inner layer of the security document. The opponent suggests that such features are disclosed in document D1 at column 2 lines 51-59 and figures 1 and 2. Particularly, the relevant text of D1 states:
“If the document 1 is made of paper, the diffraction element 2 is advantageously embossed or engraved on a support. The support 5 can be made in the form of a self-adhesive label, for example, which adheres to the document 1 with such strength that the relief structure 4 is destroyed if an attempt is made to separate the support 5 from the document 1. As is known from Swiss patent 594 936, a thin thermoplastic color layer or a hot-embossed film applied to paper can be used.”
163.In regard to this assertion I also refer to column 3 lines 13-20 which states:
“The diffraction of the incident light 6 at a relief structure 4 can be observed via reflection and via transmission; in the latter case the choice of material to be used for the document 1 and, if applicable, for the support 5 is very much limited. A greater choice of materials is available in the case of reflection. In any event, the relief structure 4 is covered in a known manner with an optically active coating protecting the relief structure 4.”
164.In accordance with my considerations under novelty I consider the document describes an embodiment by way of a transparent document 1, and transparent support 5. In this manner the security document is a multilayer film body with a transparent carrier layer and the structure layer is an inner layer of the security document. As these features are disclosed in document D1, claims 20 and 23 are rendered as lacking an inventive step.
165.Claim 21 recites the additional feature whereby the security element is a transfer layer of a transfer film. As I understand it, a transfer film is one where a layer or layers to be transferred are located upon a supporting carrier layer until such time as the layers are removed from the supporting carrier layer and adhered onto a desired substrate. While document D1 discloses a transfer layer in the form of a transparent support 5 (self-adhesive label) being applied to a transparent document, there is no disclosure of a transfer film. In relation to this difference I refer to the declaration of Dr Pizzanelli at [87] which states that the claim “relates to a transfer foil [which] in this instance does not included the carrier layer (as would be the case after being transferred to the substrate)”.
166.The document clearly teaches a self-adhesive label without indicating that the label was previously attached to a carrier layer thus forming a transfer film. I consider that the expert’s evidence makes it clear that transfer layers (which can be considered as adhesive labels) are routinely attached to a supporting carrier layer thereby forming a transfer film. I follows that I consider that claim 21 lacks an inventive step.
167.Claim 22 describes the additional feature whereby the structure layer is an outer layer of the security document. By way of describing a transparent security element being formed directly on a transparent carrier layer by way of embossing or engraving (column 2 lines 47-49) I consider the document discloses the structure layer being an outer layer of the document. Thus claim 22 also lacks an inventive step.
Summary
168.In accordance with my findings above I consider claims 1, 2, 6-8 and 20-23 lack an inventive step when document D1 is considered in view of the common general knowledge in the art. Claims 3-5 and 9-19 are found to involve an inventive step in view of this information.
D4: US 5461239 and D10: AU 2003283371
169.As discussed above in regard to novelty, document D4 is silent in regard to the following features:
· Information visible to a viewer as the document is entirely directed to machine reading.
· A security element comprising a first transparent structure layer with an adjoining layer being a reflective transparent layer (semi-transparent layer) or a transparent layer with refractive index difference > 0.2.
· A particular asymmetric diffractive grating arrangement that would produce the requisite claimed effect. In this regard there is no disclosed arrangement whereby incident light at a particular angle generates optical effects such that information visible in rear and front views respectively are not mere laterally reversed representations.
170.Similarly, document D10 is silent in regard to the following features:
·Including the transparent security element in a transparent region of the carrier substrate of a security document.
·Importantly the document does not disclose the claimed effect. This is because the document does not describe positioning alphanumeric or graphical information in such a way that would enable the Fresnel lens/mirror to produce different optical effects in front and rear view, such that information visible to the viewer in front or rear view is something other than a mere lateral reversal of the information visible in the other view.
171.The problem to be solved by the claimed invention to provide a security document which is inexpensive to manufacture and which solely by viewing a window of a security element deploys an optical effect which is striking to the observer and which is typical in respect of authenticity. Importantly, there is no evidence from the opponent to explain why the person skilled in the art would be directly led to modify documents D4 and D10 to include these missing features.
172.Thus, starting with the identified problem, I cannot consider that a person skilled in the art would be directly led to the invention of claim 1 in light of these documents considered either alone, or in light of common general knowledge. Claims 2-23 add further features to those defined in claim 1 and are thus also considered inventive in light of these documents.
Conclusion
173.The opposition is successful as I have found that claims 1, 2, 6-8 and 20-23 lack an inventive step. Other grounds of clarity, fair basis, full description and novelty are not successful. As the matter can be overcome by amendment I will allow a period of two months for the applicant to propose amendments.
Costs
174.The opponent’s summary of submissions was due on 5 January 2015 but was filed on 6 January 2015. The applicant’s summary was due on 12 January 2015 but received on 13 January 2015. While the opponent has been successful in this opposition and I would ordinarily award costs in their favour, I can take into account their delay in filing the summary of submissions. In a similar manner to the finding of the delegate in WorleyParsons Services Pty Limited v Hatch Pty Ltd [2014] APO 72, I consider it is appropriate to make no award of costs.
175.In accordance with the discretion in reg 5.20(6), I make no award of costs due to a failure of the opponent to file a summary of submissions within the timeframe set out in reg 5.20(4).
Dr N.R. Madsen
Delegate of the Commissioner of Patents
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